Etro S.p.A. v. INFO TECH

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Etro S.p.a. v. INFO TECH

Case No. D2002-0579

1. The Parties

The Complainant is Etro S.p.a, an Italian corporation with offices at Via Spartaco

3, 20135 Milano, Italy. Represented in this proceeding by Avv. Carlo Mezzanotte

and Avv. Paolo Pozzi of PERANNI MEZZANOTE & PARTNERS, of Milano, Italy.

(Hereinafter the "Complainant").

The Respondent is INFO TECH, 638-11, Seo-gu, daegu 703-016, Republic of Korea.

2. The Domain Name and Registrar

This dispute concerns the domain name <etromilano.com> (the "Domain

Name").

The Registrar is Network Solutions, Inc., of 21355 Ridgetop Circle, Dulles,

Virginia 20160, United States of America.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

the initial complaint by electronic mail on June 25, 2002, and in

hard copy on June 21, 2002, and July 9, 2002, respectively.

The Center on July 10, 2002, requested an amended complaint to take into

account further information as to the Respondent. This deficiency in the Complaint

was cured by an amended filing on July 10, and July 12, 2002. Between

the date of the original and amended complaint (collectively the "Complaint")

the Center had requested registrar verification as to the identity of the current

registrant of the Domain Name, and undertaken certain related correspondence

with the Complainant concerning the same. The Center ultimately determined that

the Complaint met all the formal requirements of the ICANN Uniform Domain Name

Dispute Resolution Policy ("Policy"), and its Rules and Supplemental

Rules, and on July 16, 2002, the Center notified the Complaint and

Commencement of Administrative Proceeding. On August 6, 2002, the

Center duly notified Respondents’ default under the Rules, receipt of which

was confirmed on August 7, 2002. There was some subsequent e-mail

traffic between the Center and the electronic addresses attributed to the Respondent

and the Domain Name; in some of which electronic correspondence Respondent requested

more time. On August 12, 2002, the Center transmitted a Notification

that a panel would be appointed, and the file transmitted to the Panelist, but

informed Respondent that the Panelist had discretion to accept a late-submission

of a Response, if one was submitted. On August 12, 2002, the file

was submitted to the undersigned. No further communications of any kind were

received from the defaulting Respondent, and the Panelist here finds that the

Panel was duly and properly constituted in accordance with the Rules and Supplemental

Rules.

4. Factual Background

The Complainant is an Italian corporation with its principal place of business

in Milan. The Complainant is a company in the fashion and design business and

has long traded under the mark ETRO both in Italy and elsewhere, this mark derives

from the name of the owner of Complainant, Mr. Etro, who is a well-known Italian

fashion designer.

INFO TECH is a Korean entity business or business name which is the registrant

or the Domain Name. As the Respondent has defaulted in this proceeding, there

is very little further information concerning INFO TECH.

Complainant has registered the trademark "ETRO" in many jurisdictions

and for several different classes of products. In particular, Complainant has

four Korean registrations of "ETRO" in various forms and for various

classes. Complainant also claims to have common law rights on the trademark

"ETRO MILANO" deriving from the extensive use of this mark on its

products and in connection with its business. Complainant submits extensive

evidence of its products and catalogues with "ETRO MILANO" inscribed

thereon.

Complainant apparently became aware of the Domain Name at the end of 2001 when

it was registered in the name of an entity called "INFO". The evidence

shows that in the February to late April 2002, at least, the Domain Name was

linked and resolved to one or more Korean sites containing adult and pornographic

material. Complainant hired Korean lawyers to try and locate the Domain Name

owner and to serve warning letters on the same. Although the lawyers were unable

to locate the ultimate owner, they did send a warning and demand letter to the

technical contact of the Domain Name on April 22, 2002. When this

panelist sought to visit the Domain Name site in mid August 2002, it resolved

to a dead end.

5. Parties’ Contentions

Complainant contends that the Domain Name is identical to its common law trade

or business mark "ETRO MILANO", and in any event confusingly similar

to Complainant’s registered trademarks "ETRO". Complainant maintains

that Respondent has no rights in connection with these marks and that Complainant

has in fact, never granted any license or permission for anyone to register

domain names incorporating its trademark. Complainant further contends that

the Domain Name is being used primarily for the purpose of disrupting Complainant’s

business. In particular, the use of its marks in a domain name that is linked

to pornography tarnishes the good reputation of ETRO, and unlawfully trades

on its goodwill. Complainant cites and submits a number of WIPO case precedents

in connection with this contention including, MatchNet Plc v. MAC Trading,

WIPO Case No. D2002-0205 and CCA Industries,

Inc., v. Bobby R. Dailey, WIPO Case No.

D2000-0148. Complainant also asserts that Respondent was making use of the

Domain Name for financial gain given that the pornographic sites to which it

resolves were commercial and offered erotic material upon payment of a fee.

All of the foregoing, Complainant maintains, demonstrates abundant bad faith

in the registration and use of the Domain Name.

As indicated above, Respondent has defaulted in this proceeding. Respondent’s

late e-mails to the Center of 7 and 8 August 2002 contain no substantive defenses

and appear geared to create delay and confusion. The Panelist is entitled to

draw appropriate inferences from Respondent’s failure to respond, together with

the evidence here presented.

6. Discussion and Findings

The Policy, in its paragraph 4 (a), provides that the Complainant must prove

each of the following:

i. The Respondent’s Domain Name is identical or confusingly similar to a trade

or service mark in which 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 used in bad faith

i. Identical or Confusingly Similar

The Domain Name includes Complainant’s widely registered trademark "ETRO".

The addition of the word "MILANO" does not operate to differentiate

the Domain Name from this registered trademark. MILANO is, of course, the Italian

name of Milan, which is Complainant’s headquarters and is widely known as one

of the world’s major centers of fashion and design. Thus, the Domain Name is,

as a minimum, confusingly similar to the much registered mark of Complainant.

See, e.g., Louis Vuitton Malletier v. Somsak Sooksripanich,

WIPO Case No. D2000-0866; Lancôme

Parfums et Beauté et Cie. v. Lily, WIPO

Case No. D2001-0724[1]. The Domain Name

is furthermore identical to the unregistered marks, which figure on much of

the material and catalogues produced by the Complainant.

ii. Respondents’ Rights or Legitimate Interests in the Domain Name

There is no indication, evidence or inference that Respondent has any legitimate

rights or interest in the Domain Name; indeed all inferences, and the evidence

and assertions of Complainant, are to the contrary.

iii. Registration and Use in Bad Faith

The evidence of bad faith registration and use is strong. It is not plausible

that Respondent registered the Domain Name without knowledge of its association

with Complainant’s marks and worldwide fashion business, both of which extend

to Korea. The use of the mark "ETRO" in combination with "MILANO"

makes it doubly obvious that the Domain Name was not chosen or registered by

chance, but with the idea of trading on Complainant’s marks and goodwill.

The subsequent linking of the Domain Name with adult or pornographic sites

established for profit is an abundantly sufficient show of bad faith use. See

e.g. Nokia Corp. v. Nokiagirls.com a.k.a. IBCC, WIPO

Case No. D2000-0102 (also submitted by Complainant). Indeed, the registration

and use of a disputed domain name in order to divert web traffic to Respondent’s

web site for a profit is a violation of paragraph 4 (b) (iv) of the Policy.

See Pepsico, Inc. v. Diabetes Home Care, Inc., and DHC Services,

WIPO Case No. D2001-0174 (and other cases

cited therein). The fact that the Domain Name is apparently currently inactive

and not linked to adult sites does not cure Respondent’s bad faith registration

and use. See American Online Inc. v. East Coast Exotics, WIPO

Case No. D2001-0661.

7. Decision

For all the foregoing reasons the Panel determines that :

a. The Domain Name <etromilano.com> is confusingly similar to Complainant’s

registered trademarks and identical to its business marks;

b. The Respondent has no rights or legitimate interests in respect of the Domain

Name; and

c. The Domain Name <etromilano.com>" has been registered

and is being used in bad faith

Therefore, the remedy requested by Complainant is granted, and Respondent is

required to transfer the Domain Name <etromilano.com> to

Complainant, Etro S.p.a.

Nicolas Ulmer

Sole Panelist

Dated: August 20, 2002

1. The Panel is aware of and (after reaching

its decision here) reviewed the case of Etro S.p.a. v. Messrs. Mark O' Flynn,

Luciano Carbonetti PGC srl, WIPO Case No D2000-1289,

in which the domain name was found confusingly similar to

Complainant's trademarks.

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