FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
About the Complainant
Diesel S.p.a. (hereinafter “Diesel” or “the Complainant”) is an Italian retail clothing company known worldwide and founded in 1978.
Since its creation in 1978, Diesel has experienced extraordinary growth and has evolved from being a leading pioneer in denim into the world of premium casual wear, becoming a true alternative to the established luxury market.
Diesel products are sold on all continents through a network of 5000 retail stores worldwide and employs approximately 3000 people in 80 countries. Diesel’s turnaround in 2012 was 1,5 billion euros.
In 2008, Diesel associated with the well-known brand Adidas to distribute jeans under the label “Adidas Originals Denim by Diesel”, in an aim to maintain the notoriety of the brand and attract younger customers. In 2009, Diesel associates with the L’Oréal group to launch perfumes under the names “Fuel for Life” and “Only the brave”.
A. The domain name is identical or confusingly similar
The disputed domain name is <deisel.com>.
The disputed domain name is highly similar to the main domain name and earlier trademarks of the Complainant, as only the second and third letter are inverted:
Complainant’s trademarks: D I E S E L
Complainant’s domain name: D I E S E L . C O M
Disputed domain name: D E I S E L . C O M
All letters of the Complainant’s trademark and domain names are visible in the disputed domain name. The Complainant contends that this case is a clear case of typo-squatting where the infringing domain name is one letter less than or different from the Complainant's mark. Such attempts have been disapproved of in various WIPO decisions (e.g. Telstra Corp. Ltd. v. Warren Bolton Consulting Pty. Ltd. D2000-1293; Playboy Enterprises International Inc. v. SAND Webnames-For Sale D2001-0094). These decisions were more recently confirmed by Société Nationale des Chemins de fer Français - SNCF v. Damian Miller / Miller Inc., Case No. D2009-0891), and very recently by CAC decision No. 101715 on the domain name <arcelormittla.com>.
The Complainant contends that the disputed domain name is highly similar, to the point of confusion, to the earlier trademark DIESEL. Indeed, the internet user who pays average attention to the domain name is very likely to be confused between the domain names <diesel.com> and <deisel.com>.
B. The Respondent has no rights or legitimate interests in respect of the domain name
The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. Indeed, the Respondent is not commonly known by the disputed domain name and has acquired no trademark or service mark rights related to the “DIESEL” or “DEISEL” terms.
Firstly, the Respondent is not commonly known by the disputed domain name. The Respondent has acquired no trademark or service mark related to the DIESEL or DEISEL terms. The Complainant has conducted trademark searches and found no DIESEL or DEISEL trademark or right owned by the owner of the disputed domain name.
Secondly, the Respondent has not been authorized to use a domain name highly similar to the Complainant’s trademark without any license or authorization from the Complainant’s company, which is a strong evidence of the lack of legitimate interest. See WIPO Case No. D2012-1336; LEGO Juris A/S v. Ibnu Firdaus.
Thirdly, the Respondent’s use of the disputed domain name or preparation to use the domain name demonstrate no intent to use it in connection with a bona fide offering of goods or services. On the contrary, the disputed domain name has not been used in any way whatsoever, except as a parking page. To the best of the Complainant’s knowledge, the Respondent has not intended or made preparations to use the disputed domain name in connection with a bona fide offer of goods or services.
The current page to which the disputed domain name points is a pay-per-click parking page of commercial links to products identical or similar to those of the Complainant. Under UDRP rules, Panels unanimously consider that associating a domain name similar to a trademark with a webpage displaying commercial link and ads does not grant the Respondent legitimate interest in the disputed domain name:
Even if the Respondent is currently receiving no revenue from the pay-per-click links on the parking page, it is very difficult to believe that a domain name of this nature would not have been registered for some commercial purpose of benefit to the Respondent. The current page offers the disputed domain name for sale. Therefore, it appears clear that the Respondent had in mind commercial gain of the domain name.
Fourthly, since the adoption and extensive use by the Complainant of the trademark DIESEL predates the first entry of the disputed domain name, the burden is on the Respondent to establish the Respondent's rights or legitimate interests the Respondent may have or have had in the domain names. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174..
None of the circumstances which set out how a respondent can prove his rights or legitimate interests, are present in this case. In light of all the elements mentioned above, the Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint.
Given that the Complainant has made a prima facie case that the Respondent lacks legitimate rights or interest in the disputed domain name, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name.
C. The domain name was registered and is being used in bad faith
Firstly, the Complainant states that the DIESEL trademarks are so widely well-known that it is inconceivable that the Respondent ignored the Complainant’s earlier rights on the term DIESEL.
It is clear that the Respondent had the Complainant’s name and trademark in mind when registering the disputed domain name. The Respondent’s choice of domain name cannot have been accidental and must have been influenced by the fame of the Complainant’s trademark. Indeed, a simple search for the terms “diesel” and “deisel" on an online search engine yields results only related to the Complainant and in particular the first result is www.diesel.com. Therefore, at the very least, the Respondent knew or should have known that, when registering and using the disputed domain name, he would do so in violation of the Complainant’s earlier rights.
Secondly, the Complainant contends that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant or any other third party.
Indeed, the disputed domain name is being offered for sale. This information is clearly stated at the right of the page to which the disputed domain name points. The fact that a domain name highly similar to a famous trademark has been put on sale has been considered a bad faith element by previous Panels.
Thirdly, the registrant uses a well-known privacy service in order to keep its identity secret. The use of such service, although not actionable per se, is a further evidence of bad faith registration and use.
WIPO Overview 2.0 explicitly states that panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
As discussed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the relevant issue is not limited to whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept.
It is well-founded that registration of the disputed domain name that is confusingly similar to the Complainant’s trademarks which enjoys strong reputation, plus other facts, such as above described non-use of the disputed domain name and Respondent’s engagement in typosquatting, are sufficient to establish bad faith under the 4(a)(iii) of the Policy. See for example CAC decision in case No. 101687 against the domain name <arcelormittol.com>.
In light of all the elements above, the Complainant contends that the domain name was registered and is being used in bad faith by the Respondent. The combination of all the elements listed and detailed above unequivocally show that the Respondent has acted in bad faith when registering and using the disputed domain name, in line with the UDRP doctrine developed under Paragraph 4(a)(iii) of the UDRP Policy.
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