Max Mara Fashion Group S.r.l. v. Bruce Lee
Claim Number: FA1105001391129
Complainant is Max Mara Fashion Group S.r.l. (“Complainant”), represented by Judith Grubner of Arnstein & Lehr LLP, Illinois, USA. Respondent is Bruce Lee (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maxmarasale.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2011; the National Arbitration Forum received payment on May 28, 2011.
On May 31, 2011, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <maxmarasale.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@maxmarasale.com. Also on June 3, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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:
Complainant is the owner of the MAX MARA mark, which it uses in connection with the marketing of its retail fashion goods and services.
Complainant owns trademark registrations for the MAX MARA mark with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,241,220, issued June 7, 1983.
Respondent registered the <maxmarasale.com> domain name on April 22, 2011.
The disputed domain name resolves to a website which sells counterfeit versions of Complainant’s retail fashions.
Respondent’s <maxmarasale.com> domain name is confusingly similar to Complainant’s MAX MARA mark.
Respondent is not commonly known by the disputed domain name.
Respondent’s use of the MAX MARA trademark is without the authorization of Complainant.
Respondent does not have any rights to or legitimate interests in the domain name <maxmarasale.com>.
Respondent registered and uses the disputed <maxmarasale.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant has rights in the MAX MARA trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to the identity of the jurisdiction in which such registration is established. See, for example, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent resides or operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Respondent’s <maxmarasale.com> domain name, which differs from Complainant’s MAX MARA trademark in part by the elimination of a space between the terms of the mark and the addition of a generic top-level domain (“gTLD”), is confusingly similar to the mark. This is because both such alterations of the mark are necessary in order to create a domain name from it. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a complainant’s mark and the addition of a gTLD to the mark in forming a domain name do not establish distinctiveness from the mark under Policy ¶ 4(a)(i). See also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007):
Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).
Similarly, the addition of a generic term, such as the word “sale” in this instance, to the mark of another in forming a domain name fails to distinguish the resulting domain from the mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that a respondent’s domain names were confusingly similar to a complainant’s GOOGLE mark where that respondent merely added common terms such as “buy” or “gear” to the end of the mark); see also Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to a complainant’s DISNEY mark in a respondent’s domain name <finestdisneyhomes.com> were insufficient to distinguish the domain name from the mark under Policy ¶ 4(a)(i)).
Accordingly, the Panel finds that the disputed <maxmarasale.com> domain name is confusingly similar to Complainant’s MAX MARA trademark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights to or legitimate interests in the disputed domain name. Once a complainant makes out a prima facie case in support of its allegations in this regard, the burden shifts to a respondent to provide evidence that it has such rights or interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in a domain name); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant has presented a prima facie case on the point of Respondent’s rights to or legitimate interests in the contested domain name. Respondent’s failure to respond to the Complaint filed in this proceeding allows us to presume that Respondent lacks rights to and legitimate interests in its domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond to the allegations of a complaint filed under the Policy).
Nonetheless, we will review the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent’s use of the MAX MARA trademark is without the authorization of Complainant. Moreover, the WHOIS information for the subject domain name reveals that the registrant is identified only as “Bruce Lee,” which does not resemble the domain name. On this record, we must conclude that Respondent is not commonly known by the disputed <maxmarasale.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the domain within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in them, where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
We next note that Complainant asserts, without objection from Respondent, that Respondent’s domain name resolves to a webpage which sells counterfeit versions of Complainant’s fashion merchandise. In the circumstances here presented, we may comfortably presume that Respondent profits from this use of the disputed domain name. We conclude, therefore, that Respondent’s sale of counterfeit versions of Complainant’s merchandise via the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002):
Respondent’s use of the confusingly similar domain name to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
See also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii), where a respondent purported to resell original Pitney Bowes equipment on its website as well as the goods of commercial competitors of a complainant).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the contested disputed domain name as alleged in the Complaint disrupts Complainant’s business. This demonstrates bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003):
Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).
Respondent’s registration and use of the disputed domain name as charged in the Complaint was evidently done for commercial gain. This also stands as evidence of registration and use of the domain name in bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s business illustrates that respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where a respondent used a disputed domain name, for commercial gain, to attract users to the website of a direct competitor of a complainant).
For these reasons, the Panel finds that Complainant has met the proof requirements of Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <maxmarasale.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 7, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page