Case Details for WIPO Case D2016-1463

WIPO Case Summary

WIPO Case Number	D2016-1463
Domain name(s)	desigualonline.com desigualoutlet.com
Complainant	INTS IT IS NOT THE SAME GMBH
Respondent	Manuel Guitián Lopez / Domains By Proxy, LLC vitor Whoiscontactsprotection.com
Panelist	Nappey, Alexandre
Decision Date	12-09-2016
Decision	Transfer

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

INTS IT IS NOT THE SAME GMBH v. Manuel Guitián Lopez / Domains By Proxy, LLC and vitor Whoiscontactsprotection.com

Case No. D2016-1463

1. The Parties

The Complainant is INTS IT IS NOT THE SAME GMBH of Zug, Switzerland, represented by Fabregat, Perulles, Sales Abogados SCP, Spain.

The Respondents are Manuel Guitián Lopez / Domains By Proxy, LLC of Badalona, Spain and vitor Whoiscontactsprotection.com of Barcelona, Spain.

2. The Domain Names and Registrar

The disputed domain names <desigualonline.com> and <desigualoutlet.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2016. On July 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 20, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on July 27, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 28, 2016.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2016.

The Center appointed Alexandre Nappey as the sole panelist in this matter on August 29, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is part of the Desigual group which is selling, among other products, clothes, accessories, shoes, bedclothes, table linen, decoration and perfumery products, under the DESIGUAL trademark all over the world and online through the website “ Complainant is the owner, among other, of the following European Union trademarks DESIGUAL:

- DESIGUAL (figurative mark with an inverted “S” (Ƨ)), registered under No. 3805652 on September 12, 2005, in classes…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Ints It Is Not the Same GmbH v Manuel Guitián Lopez / Domains By Proxy, LLC WIPO Case No. D2016-1463
Case: WIPO Case No. D2016-1463
Decision Date: 12-09-2016

CaseChat Overview and Summary

The case of INTS IT IS NOT THE SAME GMBH v. Manuel Guitián Lopez / Domains By Proxy, LLC and vitor Whoiscontactsprotection.com, Case No. D2016-1463, involves a dispute over the ownership and use of two domain names, desigualonline.com and desigualoutlet.com, under the Uniform Domain Name Dispute Resolution Policy (UDRP). The Complainant, INTS IT IS NOT THE SAME GMBH, a company based in Switzerland, asserts ownership of the DESIGUAL trademark and claims that the Respondents, Manuel Guitián Lopez and vitor Whoiscontactsprotection.com, have no rights or legitimate interests in the disputed domain names, which they have registered and used in bad faith.

The legal issues before the Panel were whether the disputed domain names were confusingly similar to the Complainant's trademark, whether the Respondents had rights or legitimate interests in the domain names, and whether the domain names were registered and used in bad faith. The Panel needed to determine these issues under the UDRP to decide whether the domain names should be transferred to the Complainant.

The Panel first addressed the issue of consolidation of the Respondents, finding that the disputed domain names were subject to common control by Manuel Guitián Lopez, and consolidation was fair and equitable. The Panel then found that the disputed domain names were confusingly similar to the Complainant's DESIGUAL trademark, as they incorporated the entire trademark and the addition of "online" and "outlet" did not mitigate the similarity. Regarding the second issue, the Panel concluded that the Complainant had made a prima facie case that the Respondents lacked rights or legitimate interests in the domain names, which the Respondents failed to rebut. Finally, the Panel determined that the Respondents registered and used the domain names in bad faith, given their use of the domain names to mimic the Complainant's website and the passive holding of one of the domain names. The Panel found that the Respondents were aware of the Complainant's trademark rights at the time of registration and intended to create confusion for commercial gain.

In conclusion, the Panel ordered the transfer of the disputed domain names, desigualonline.com and desigualoutlet.com, to the Complainant, INTS IT IS NOT THE SAME GMBH, under paragraphs 4(i) of the Policy and 15 of the Rules. The decision was made on September 12, 2016.

Orders