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Leaf Italia S.r.l. v. Nick De Decker [2005] GENDND 1661 (1 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Leaf Italia S.r.l. v. Nick De Decker

Case No. D2005-0688

1. The Parties

The Complainant is Leaf Italia S.r.l., Cremona, Italy, represented by Studio Legale Perani, Italy.

The Respondent is Nick De Decker, Seoul, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <dietorelle.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2005. On June 30, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On July 1, 2005, OnlineNic, Inc. d/b/a China-Channel.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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 15, 2005. The Center verified that the Complaint together with the amendment to 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 Nathalie Dreyfus as the sole panelist in this matter on August 18, 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

Complainant is “Leaf Italia S.r.l.” having its place of business in Cremona, Italy. The Complainant’s core business is confectionery business.

Complainant registered several trademarks “DIETORELLE” in connection with confectionery business. The date of first use of the trademark “DIETORELLE” is March 9, 1993.

Complainant also maintains a website at “www.dietorelle.it”. The domain name <dietorelle.it> was first registered on December 7, 1999.

The disputed domain name <dietorelle.com> was registered on January 24, 2005, with OnlineNic and is currently being held by the Respondent, Nick De Decker, Seoul, Republic of Korea.

Respondent is not a licensee of the Complainant and is not otherwise authorized to use any of Complainant’s trademarks.

Respondent has used the domain name at issue to resolve to a website that offers various links to websites offering products and services specialized in diet confectionery business.

5. Parties’ Contentions

A. Complainant

The Complainant has put forth the following legal and factual contentions:

The Complainant asserts that its company is a market leader in the confectionery business sector and that it produces the most popular and widely consumed sugar-free candies in Italy. It also asserts that the trademark DIETORELLE is immediately associated and synonymous with sugar-free candies.

The Complainant considers that the domain name <dietorelle.com> is identical to several trademark applications and registrations “DIETORELLE” on which it has rights and to the domain name <dietorelle.it>.

The Complainant contends that the Respondent has no right on the domain name since the same does not correspond to a registered trademark in the name of the Respondent. The Complainant has been maintaining for several years a worldwide trademark watching service on the trademark DIETORELLE and no trademark application covering this term in the name of the Respondent has ever been detected.

Finally, the Complainant contends that the domain name at stake does not correspond to the business name of the Respondent and that the Respondent is not commonly known as “DIETORELLE” or under the domain name <dietorelle.com>.

At the time of the registration, the Respondent had no legitimate interest in registering the term and there was no business relation between the Complainant and the Respondent. The purpose of the website offering the disputed domain name for sale is clearly to gain a profit.

The fact that the contested domain name is linked to a web site which content shows a home page making reference to “weight loss products”, “diet pills”, “weight loss program” also demonstrates the Respondent’s bad faith. By clicking on some links proposed on said web site, other web pages appear with links to additional web sites which promote this kind of products and services.

The choice and the use of the domain name <dietorelle.com> by the Respondent is only motivated by commercial gain.

The actual use of the domain name <dietorelle.com> in connection with web sites which have not been approved by the Complainant cause serious damage to the latter and is evidence of bad faith use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has demonstrated its rights to the trademark “DIETORELLE”.

The domain name <dietorelle.com> is identical to the previous trademarks “DIETORELLE” with the mere inclusion of the “.com” suffix. Such an inclusion is due to the current technical specificities of the domain name system. Therefore, this inclusion should not be taken into account in evaluating the identity or similarity between the disputed domain name and the Complainants’ mark (New York LIFE Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812 or A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc. ., WIPO Case No. D2003-0172).

The comparison between the disputed domain name and the Complainant’s trademarks reveals the following:

- the contested domain name <dietorelle.com> is entirely composed of the mark “DIETORELLE”.

- the contested domain name includes the “.com” suffix, which is not to be taken into account.

As a result, the Panel finds that the domain name is identical or at least confusingly similar to the trademarks “DIETORELLE” owned by the Complainant. Therefore, the Panel considers that the condition set out in paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel considers that the Respondent does not show use or preparations for use in connection with a bona fide offering of goods and services. The domain name at issue, <dietorelle.com>, directs to a web page proposing links to different products and services all in relation to solutions to loose weight, which is precisely the main business of the Complainant.

The Respondent has no relationship with the legitimate owner of the rights related to the name “DIETORELLE”, and the Complainant has never granted the Respondent the right to use this trademark.

Besides, the Respondent does not appear to be known under the name “DIETORELLE”.

As has been held by prior UDRP panels, once the Complainant has established a prima facie case on the lack of rights and legitimate interests, the burden is on the Respondent to provide evidence of its right and legitimate interest in the contested domain name (See for example, Southcorp Limited v. Frontier Direct Pty Ltd, WIPO Case No. D2004-0949, <penfoldsgrange.net>, and Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753).

As the Respondent in this case has not respondent to the Complainant’s allegations, the Panel considers that it has not established any right or legitimate interests in regard of the domain name. Therefore, the Panel considers that the condition set out in paragraph 4(a)(ii) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

It has been demonstrated that the whois record of the disputed domain name <dietorelle.com> includes, as part of the Respondent’s identification, the indication “domain name for sale”. The same can be found on the web page of the disputed domain name (“This Domain for sale!).

This mention which the Respondent knowingly included as part of the public records on the domain name could indicate that the Respondent registered the domain name primarily for the purpose of selling the domain name for valuable consideration.

The Respondent’s domain name diverts Internet users wishing to search Complainant’s products to Respondent’s commercial website which propose similar products to those of the Complainant through the use of a domain name identical or at least confusingly similar to Complainant’s marks and own domain name. Moreover, Respondent’s website also proposes links to other websites offering products similar to the Complainant’s products.

Paragraph 4(b)(iv) of the Policy lists as an example of bad faith registration and use the fact that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.

Numerous panels have held that using a domain name confusingly similar to a Complainant’s mark to link to a website of competitors constitutes “bad faith”. (See Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537, “Complainants persuasively argue that Respondent has registered and used the Disputed Domain Name in bad faith. Specifically, Complainants argue that Respondent’s bad faith is reflected in the fact that, with both constructive and actual knowledge of Complainants’ trademark rights, Respondent redirected web traffic from the Disputed Domain Name to one of Staples’ chief competitors; uses a typosquatted, i.e., confusingly similar domain name; and nothing in the record suggests that Respondent has a bona fide reason for Respondent’s choice of a domain name that is confusingly similar to Complainants’ trademarks and company name.”

See also, Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319, (“[R]egistration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“[R]egistration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s website to the website of . . . a company which directly competes with the Complainant, constitutes bad faith registration and use.”); Zwack Unicum Ltd v. Erika J. Duna, WIPO Case No. D2000-0037 (Respondent’s linking to Complainant’s competitor held to constitute bad faith); Oly Holigan, L.P. v. Private, N.A.F. Case No. FA0011000095940 (December 4, 2000) (finding bad faith where Respondent used the disputed domain name to “redirect Complainant’s consumers and potential consumers to commercial websites which are not affiliated with Complainant”); Marriott International, Inc. v. Kyznetsov, N.A.F. Case No. FA0009000095648 (October 24, 2000) (finding bad faith where respondent registered the domain name <marriottrewards.com> and used it to route internet traffic to another website that “promotes travel and hotel services . . . identical to the services offered by the Complainant”).

As a result, the Panel finds that the domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out in paragraph 4(b)(i) of the Policy has been met by the Complainant.

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 <dietorelle.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist

Dated: September 1, 2005