Canali Ireland Limited v. iCapital Holdings c/o Jonathan Kimball
Claim Number: FA0706001007962
Complainant is Canali Ireland Limited (“Complainant”), represented by Amy
F. Divino, of Wolf Block Schorr and Solis-Cohen LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <canali.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 13, 2007.
On
On June 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 10, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@canali.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <canali.com> domain name is identical to Complainant’s CANALI mark.
2. Respondent does not have any rights or legitimate interests in the <canali.com> domain name.
3. Respondent registered and used the <canali.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Canali Ireland Limited, sells apparel bearing the CANALI mark around the world. Complainant produces more than 2,500 suits and trousers featuring the CANALI mark each day. Complainant maintains twelve showrooms and 25 boutiques worldwide and sells its merchandise in over 80 countries.
Complainant has continuously and extensively used the mark
in commerce since 1968 and in the
Respondent’s <canali.com> domain name, which it registered on July 23, 1996, resolves to a commercial search engine featuring links to third-party websites in direct competition with Complainant, as well as links to unrelated goods and services.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s numerous trademark
registrations for the CANALI mark sufficiently demonstrate its rights in the
mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s
federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks
were adequate to establish its rights in the mark pursuant to Policy ¶
4(a)(i)); see also Microsoft
Corp. v. Burkes, FA
652743 (Nat. Arb. Forum
The only difference between Complainant’s federally registered CANALI mark and Respondent’s <canali.com> domain name is the addition of the generic top-level domain (“gTLD”) “.com.” As a top-level domain is a required addition for every domain name registration, the Panel finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“The panel finds that Respondent’s <bigtow.com> domain name is identical to Complainant’s BIG TOW mark pursuant to Policy ¶ 4(a)(i) because the disputed domain name contains Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant maintains that Respondent lacks rights and legitimate interests in the <canali.com> domain name. Complainant must first establish a prima facie case in support of this argument and if it does, the burden effectively shifts to Respondent to counter Complainant’s claims and show that it does have rights or legitimate interests in the domain name in dispute. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name). In the present case, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii) and therefore the burden is now upon Respondent.
Because Respondent has not responded to the Complaint, the Panel presumes that it has no rights or legitimate interests in the <canali.com> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). Nevertheless, the Panel will still consider the elements laid out in Policy ¶ 4(c) before deciding that Respondent lacks rights and legitimate interests in the <canali.com> domain name.
Complainant asserts that there is no evidence in the record
suggesting that Respondent is commonly known by the <canali.com> domain name.
A look at the WHOIS information reveals that the registrant is “iCapital Holdings c/o Jonathan Kimball,” and there
does not appear to be any other indicators that could establish Respondent’s
rights or legitimate interests with respect to this factor of Policy ¶
4(c). Therefore, the Panel finds that
Respondent is not commonly known by the domain name in dispute under Policy ¶
4(c)(ii). See Braun
Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that the respondent was not commonly known by
the disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark).
Respondent is redirecting Internet users who enter the <canali.com> domain name to a
commercial search engine website featuring links to Complainant’s competitors
in the apparel industry as well as unrelated websites. Respondent is likely profiting from
click-through fees it receives each time an Internet user clicks on one of the
links at its website. The
panels in Hoffman-La Roche Inc. v.
Truskowski, FA 808287 (Nat. Arb.
Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The website at Respondent’s <canali.com> domain name is made up primarily of links to
various websites, some of which are apparel companies in direct competition
with Complainant. In Red
Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the
panel found that the respondent engaged in bad faith registration and use
pursuant to Policy ¶ 4(b)(iii) by using domain names
confusingly similar to the complainant’s mark to operate commercial search
engines with links to the products of the complainant and to the complainant’s
competitors, as well as by diverting Internet users to several other domain
names. The panel in Tesco
Personal Finance Limited v. Domain Management Services, FA 877982 (Nat. Arb. Forum
Considering that Respondent likely profits from
click-through fees each time an Internet user selects a link on its website,
the Panel finds that Respondent is taking advantage of the likelihood of
confusion between the <canali.com>
domain name and Complainant’s CANALI mark in order to profit from the
goodwill associated with the mark. Such
registration and use of the disputed domain name, which is identical to
Complainant’s CANALI mark, represents bad faith registration and use pursuant
to Policy ¶ 4(b)(iv).
See
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <canali.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 27, 2007
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