Helmut Lang S.a.r.l. v. New York Link, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Helmut Lang S.a.r.l. v. Domain Research and Sales

Case No. D2002-0133

1. The Parties

Complainant is Helmut Lang s.a.r.l., Luxembourg, represented by Mr. Luca Barbero,

c/o Studio Barbero, Via Tripoli 104, 10137, Torino, Italy, hereinafter

the "Complainant".

Respondent is New York Link Inc., 101 West 23rd street,

NY, NY 10011 10010, United States of America, hereinafter the

"Respondent".

2. Domain Name and Registrar

The domain name in dispute is <helmut-lang.com>.

The registrar for the disputed domain name is Names4Ever.com, 5266 Eastgate Mall,

San Diego, CA, 92121, United States of America.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint, received

by the WIPO Arbitration and Mediation Center ("the Center") on February 9, 2002

on e-mail, and on February 13, 2002, in hardcopy. On February 13, 2002,

the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.

(b) On February 14, 2002, the Center transmitted a Request for Registrar

Verification to the registrar, with the Registrar’s Verification received by

the Center on February 22, 2002 confirming that the domain name at

issue was registered through Names4Ever.com.

(c) On February 27, 2002, the Center transmitted the Notification of the Complaint

and Commencement of the Administrative Proceeding in WIPO

Case No. D2002-0133 to the Respondent, after having satisfied itself

that the Complainant had complied with all formal requirements pursuant to the

Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation

for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the

Policy"), the Rules for the Uniform Domain Name Dispute Resolution Policy

approved by ICANN on October 24, 1999 ("the Rules"), and

the WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy

("the Supplemental Rules").

(d) No Response was submitted by the Respondent within the deadline for submission

of Response. Accordingly, the Center issued a Notification of Respondent Default

on March 21, 2002.

(e) In view of the Complainant’s designation of a single panelist, the Center

invited Mr. Peter Nitter to serve as a panelist on March 27, 2002.

Having received his Statement of Acceptance and Declaration of Impartiality

and Independence of April 2, 2002, the Center formally appointed him

as Sole Panelist. On April 5, 2002, THE CENTER transmitted the case

file to the Administrative Panel. The parties were notified of the Appointment

of Administrative Panel on April 9, 2002.

(f) The Sole Panelist finds that the Administrative Panel was properly constituted

and appointed in accordance with the Rules and the Supplemental Rules. The Administrative

Panel shall issue its decision based on the complaint, the Policy, the Rules

and the Supplemental Rules. The proceedings have been conducted in English.

4. Factual Background

After the Complainant’s assertions, supported by the documents enclosed as

annexes to the complaint, and undisputed by Respondent because of its default,

the Panel finds the following:

Complainant is the owner of trademark registrations for HELMUT LANG in a large

number of countries, and distributes luxury goods under this trademark around

the world.

The Respondent has registered the domain name <helmut-lang.com>. Respondent

has previously registered the domain names <jeanpaulgaultier.com> and

<thierry-mugler.com> without any rights or legitimate interest in the

corresponding trade marks, and these domain names have been transferred to their

legitimate owners according to WIPO Cases

No. D2000-0822 and No. D2001-0713

respectively.

There is no relation between Respondent and Complainant, and Respondent is

not a licensee of Complainant, nor has Respondent otherwise obtained an authorization

to use Complainant’s trademarks.

5. Parties’ Contentions

5. 1Complainant

The Complainant asserts that:

The domain name at issue is identical to Complainant’s trademark.

The Respondent has no right or legitimate interest in respect of the domain

name at issue. Respondent has nothing to do with Complainant or Complainant’s

business, and there are no indications that Respondent would have bona fide

interests in relation to the trademark HELMUT LANG.

The domain name was and is registered and used in bad faith.

HELMUT LANG is a well-known mark, and Respondent is evidently aware that the

domain name <helmut-lang.com> corresponds to this trademark.

It is probable that the Respondent deliberately registered the domain name

at issue on account of the identity to the well-known trademark HELMUT LANG,

primarily to attract Internet users to Respondents commercial web site <www.helmut-lang.com>.

The Complainant requests the Administrative Panel issue a decision that the

contested domain name must be transferred to the Complainant.

5. 2 Respondent

The Respondent has not submitted a response, and is thus in default. Respondent

has neither made any submissions after the Notification of Respondent Default.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles

the Administrative Panel is to use in determining the dispute: "A Panel

shall 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."

Paragraph 4(a) of the Policy lists three tests which a complainant must satisfy

in order to succeed.

The Complainant must satisfy 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 such

domain name; and

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

bad faith.

6.1 Identical or confusingly similar to a trademark or a service mark

The Domain Name at issue is <helmut-lang.com>. As the addition of hyphens

and indicator of top level domain is without significance to the assessment

of identity between a trade mark and a domain name, the Panel finds that the

Domain Name is identical to a trade mark or service mark in which the Complainant

has rights.

6.2 Rights or legitimate interest in the domain name

The Panel has considered the allegation by the Compliant as to the lack of

rights or legitimate interests of the Respondent in respect of the domain name

at issue, including the Complainant’s contention about the lack of any legitimate

intellectual property right of the Respondent to the contested domain name.

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.

Thus, the Panel finds that the Respondent has no rights or legitimate interest

in the contested domain name.

6.3 Registration and use in bad faith

Complainant’s allegations and evidence with regard to the Respondent’s registration

and use of the domain name in bad faith has been considered by the Panel. By

not submitting a response, Respondent has failed to invoke any circumstances

which could demonstrate that it did not register and use the Domain Name in

bad faith.

Complainant’s trade mark is well known. It has therefore in all probability

been known to Respondent when registering the contested domain name.

Respondent’s registration of the domain name at issue, and continuous use of

the same, thus appears to be an intentional attempt to attract, for commercial

gain, Internet users to its web site <www.helmut-lang.com> , by creating

a likelihood of confusion with Complainant’s mark as to the source, sponsorship,

affiliation, or endorsement of this web site.

The submitted evidence of Respondent’s previous record of registering domain

names identical to well-known designer trade marks, without any legitimate interest

in these, is a further indication of Respondent’s bad faith in registering and

using the domain name at issue.

These are circumstances which constitute evidence of registration and use of

a domain name in bad faith pursuant to Paragraph 4(b) of the Policy.

The Panel therefore finds that the Respondent has registered and is using the

domain name at issue in bad faith.

7. Decision

In light of the foregoing, the Panel has found that the domain name <helmut-lang.com>

is identical to a trade mark held by the Complainant, and that the Respondent

has no rights to or legitimate interest in said domain name. The Panel has further

found that the domain name has been registered in bad faith, and that it has

been and is being used in bad faith.

Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the

Panel decides to request that the domain name <helmut-lang.com> be transferred

to the Complainant.

Peter G. Nitter

Sole Panelist

Dated: April 26, 2002

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