By: www.DefendMyDomain.com
In the recent domain name dispute decision of Roberto Cavalli S.p.A., IGA Finance B.V. v. Jekaterina Kaidanovits-Rogers (WIPO D2009-0740, August 5, 2009), a single member Panel was faced with a dispute over the domain www.robertocavalliusa.com. Complainant is the famous Italian designer and has trademark rights in the name ROBERTO CAVALLI. Cavalli maintains a web site at www.robertocavalli.com. Respondent failed to respond to the complaint.
Paragraph 4(a) of the ICANN UDRP Policy states that Complainant must prove (i) the domain name is identical or confusingly similar to a trademark or service mark in which the 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.
In addressing the first element, the Panel found that the disputed domain contained all of Complainant’s mark and merely added “usa” at the end. This was enough for the Panel to determine the domain was confusingly similar.
Moving to the second element, the Panel agreed with Complainant’s arguments which included:
(i) The Respondent has not been authorised by the Complainant to register nor to use the Complainant’s marks. (ii) The Respondent is not associated in any way with the Complainant or its distribution network. (iii) The Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name ROBERTO CAVALLI. (iv) There is no evidence of a bona fide noncommercial or other legitimate fair use by the Respondent.
The Panel found that Complainant provided sufficient unrebutted evidence and noted that the second element was satisfied.
Moving to the final element, bad faith, the Panel explained that Complainant’s evidence of the disputed domain showed it was being used for “promoting sales of Complainant’s products which appear to be paralell imported and may even be counterfeited.” In light of these findings the Panel found that Complainant satisfied this element as well.
Ultimately, the Panel agreed with Complainant and ordered the disputed domain be TRANSFERRED.
