|Kläger||Carolina Herrera, Ltd.|
|Beklagter||Alberto Rincon Garcia|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carolina Herrera, Ltd. v. Alberto Rincon Garcia
Case No. D2002-0806
1. The Parties
Complainant is Carolina Herrera, Ltd., a company based in 501 Seventh Avenue, New New York, NY 10018, USA.
Respondent is Alberto Rincon Garcia, whose address is Plaza San Marcial 1, Bajo, Lasarte, Guipuzcoa 20160 Spain.
2. The Domain Name and Registrar
The domain name at issue is <carolina-herrera.com> (hereinafter Domain Name).
The Domain Name is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com, 13205 13205 SW SW 137th 137th Avenue, Suite #133, Miami, FL 33186, USA.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August August 28, , 2002, and subsequently in hard copy on August August 30, , 2002. The Center sent an acknowledgement of Receipt of Complaint to Complainant on August August 30, , 2002.
On August 30, 2002, a request for Registrar Verification in connection with this case was transmitted to the Registrar. On the same day, the Registrar confirmed that: (i) a copy of the Complaint had been received by the same on August August 30, , 2002; (ii) the Domain Name is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com; (iii) Respondent is the current registrant of the Domain Name; (iv) the Domain Name will remain locked during the pending proceeding; and (v) the language of the registration agreement for the Domain Name is English.
On September 2, 2002, the Center transmitted to Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) by the required means, setting a deadline at September September 22, , 2002, by which Respondent could file a Response to the Complaint.
Given that no Response was filed within the deadline above, the Center sent Respondent a Notification of Respondent Default on September September 24, , 2002.
On October 1, 2002, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Panelist in this proceeding, indicating that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. The date scheduled for issuance of the Panelists decision is October 15, 2002, in absence of any exceptional circumstances.
The Panelist has independently determined and agreed with the assessment of the Center that the Complaint as amended by the Amended Complaint formally complies with the requirements of the Uniform Domain Name Dispute Resolution Policy, the Rules for Uniform Domain Name Dispute Resolution Policy and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
4. Factual Background
Complainant has provided evidence of a number of trademark registrations for the name Carolina Herrera alone or combined with other words (such as "Carolina Herrera Studio", "Flore Carolina Herrera", "Aquaflore Carolina Herrera", "Carolina Herrera + CH", "CH Carolina Herrera Device") in many countries, including the United States, the Republic of China, Spain, Italy and France (see Attachments 8-10 to the Complaint).
Complainant has submitted supporting evidence of the year-long use of the Carolina Carolina Herrera trademarks in connection with high-end fashion and fragrance and of the international renown of its trademarks; such evidence has not been challenged by Respondent which is in default.
According to the Affidavit by Robert McCormick, Complainant, which is a corporation founded over twenty years ago and dealing with designs and manufactures in the luxury fashion sector, conducts its business throughout both its numerous retail stores which are located in various countries of the world (such as for instance Spain, U.S.A., Canada, Portugal) and third parties to which it licenses its trademarks for designing and distributing its products. Complainant has invested nearly Euro 40,000,000 in each of the last two years in advertising in order to promote "Carolina Herrera" trademarks and products. The Complainants product line is often associated in the press with the most well-know designers products (see Attachment 12). Complainant has designed dresses for famous female celebrities (see Attachment 12, p. 15) and has won a number of awards in connection with the business it carries out (see Attachment 7, p. 9-11).
5. Parties Contentions
A. Complainants Summarised Contentions:
Complainant contends that:
- the Domain Name <carolina-herrera.com> is identical or confusingly similar to Complainants registered "Carolina Herrera" trademarks;
- Respondent has no rights or legitimate interests in the Domain Name;
- Respondent neither is a licensee of Complainant nor has been authorised by Complainant to use the Carolina Herrera trademark;
- Respondent does not satisfy any of the requirements set forth under Par. 4(c) of the Rules, considering that Respondents activity is not commonly known as Carolina Herrera and that Respondent is not capable of demonstrating that before any notice of the dispute there was Respondents 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 and services;
- the "Carolina Herrera" trademark is registered also in Spain and Complainants products bearing the Carolina Herrera trademark are currently sold in various retail stores in Spain and throughout Europe, therefore it is arguable that Respondent knew of Complainants trademark at the time he chose to register the Domain Name;
- Respondents Domain Name was both registered and used in bad faith since Respondent "knowingly chose a name which is identical to the famous trademark of Complainant thereby intentionally creating a situation which is at odds with the legal rights and obligations of the parties";
- by registering and using a Domain Name containing Complainants famous and distinctive trademark, Respondent "acts in bad faith by aiding the dilution of the mark no matter how gradual".
Based on the above, Complainant requests the transfer of the Domain Name.
No Response was submitted.
6. Discussion and findings
Par. 15(a) of the Rules instructs the Panelist to decide the Complaint on the ground of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In the present case, Respondent is in default. In such a case, under Par. 14(a) of the Rules it is established that the Panelist "shall proceed to a decision on the complaint" and under Par. 14(b) the Panelist "shall draw such inferences therefrom as it considers appropriate" (see Bodegas Vega Sicilia, S.A. v. Serafin Rodriguez Rodriguez, WIPO Case No. D2001-1183 (December 10, 2001); Icar SPA v. ICAR, WIPO Case No. D2000-0563 (July 18, 2000)).
Under Par. 4(a) of the Policy, Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to complainants trademark or service mark;
(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.
A. Identity or confusing similarity
The Domain Name is <carolina-herrera.com>. Complainant owns several trademark registrations for the words "carolina herrera" alone or in combination with different words.
The Domain Name incorporates Complainants "carolina herrera" trademark with a hyphen. The addition of the hyphen is not distinctive and does confer nothing to distinguish the Domain Name from the mark.
Accordingly to various WIPO decisions, the Panelist finds that this kind of combination does not create a new or different mark nor alters the likelihood of confusion with Complainants trademarks (see amongst others: Audi AG v. Numidia S.p.a. WIPO Case No. D2002-0310 (July 18, 2002); Dr. Ing. H. c. F. Porsche AG v. Simon Harvey, WIPO Case No. D2002-0194 (May 13, 2002); Nokia Corporation v. Phonestop, WIPO Case No. D2001-1237 (December 6, 2001); Nora Baumberger v. SAND WebNames For Sale, WIPO Case No. D2001-0502 (June 7, 2001)).
Therefore the Panelist holds that the Domain Name is confusingly similar to Complainants trademarks pursuant to the Policy Par. 4(a)(i).
Rights or Legitimate Interests
According to Par. 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in the Domain Name. As regards the burden of proof, several WIPO decisions have ruled that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing" (Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 (October 1, 2001), page 8; see also International Hospitality Management IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683 (September 16, 2002); Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000)).
Respondent has no relationship with or authorisation from Complainant for using the "carolina-herrera" mark. Complainant asserts that Respondent has not been commonly known by the Domain Name. In the Panelists view, these facts, which are confirmed by the Affidavit attached to the Complaint, must be taken as proven considering that they have not been denied by Respondent.
On the other hand, by not submitting a Response, Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the Domain Name under Par. 4(c) of the Policy.
Therefore the Panelist finds Respondents lack of legitimate interests or rights in registering the Domain Name pursuant to Par. 4(b) of the Policy.
Under Section 2 of the ICANN Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the pending case, the Panelist reasonably finds that since Complainants trademarks are well known worldwide, it is very unlikely that Respondent, at the time he registered the Domain Name, was not aware that he was infringing Complainants trademarks (see Nokia, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000)).
WIPO case law has consistently established that the facts that Respondents registration is confusingly similar to Complainants trademarks, that Respondent failed to reply to Complainants cease and desist letter (which, in the present case, was sent by Complainants counsel at the end of March 2002; Complainant has provided evidence Respondent received this letter by April - see Attachment 15 to the Complaint), and that Respondent failed to file a Response to the Complaint, suggest that the Domain Name has been registered and is being used in bad faith (see amongst others America On-line, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 (January 19, 2000); Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007 (March 6, 2000); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000); Robertas, Inc. v. Rick Falck, WIPO Case No. D2001-0042 (March 6, 2001).
Finally, the Panelist considers that the Domain Name is clearly connected with a well-known trademark and products that its use by someone with no connection with the products suggests opportunistic bad faith (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenyx Group Co., WIPO Case No. D2000-0163 (May 1, 2000)).
Complainant has submitted evidence of the facts mentioned above, therefore it succeeds in proving the element under Par. 4(c) of the Policy.
For the foregoing reasons, the Panelist requires that the Domain Name
<carolina-herrera.com> be transferred to Complainant.
Dated: October 16, 2002