Oscar Studio di Cavallin Oscar of Veneto, Italy, which owns an Italian Trademark on the term “leather crown” just won a UDRP on matching .com LeatherCrown.com which was owned by Rob Monster of Epik who registered the domain name on July 18, 2012.
The Complainant operates its site at LeatherCrown.it and has a Italian trademark registered on November 29, 2010 (filed July 28, 2009) in class 25 for clothing, footwear and headgear.The one member panel of Tony Willoughby, while making it clear “that in principle there is no reason why a proprietor of a domain name connected to a commercial pay-per-click website should not be able to establish rights or legitimate interests in respect of that domain name.
“The fact that it may be a third party who is directing the links does nothing to assist the Respondent. The Respondent has to accept responsibility for what is on the site and particularly where it is providing him with a source of income.”
The Complainants point to the legend at the top of the Respondent’s website reading: “This domain may be for sale”. In the Panel’s experience this is most unlikely to constitute an express offer for sale. It is a generic legend to be found on the websites of most registrars and not specific to any category of domain name.
“The Respondent’s website is clearly targeted to a significant degree to the Complainants’ field of activity (not leather crowns) and the Complainants’ geographical location (Italy). Some of the links feature the Complainants’ products, but many also feature the products of the Complainant’s competitors.”
“While it is possible that the Respondent acquired the Domain Name blissfully unaware of the existence of the Complainants and the use to which the Domain Name has been put, the Panel finds it more likely that the Respondent intentionally set out to target the Complainants’ brand and to derive commercial gain on the back of the fame of the Complainants’ brand. The Respondent is a self-proclaimed expert in the “consumer internet” area and the Panel believes it more likely than not that the Respondent will have investigated the potential of the Domain Name before acquiring it and will have monitored the use to which it has been put. Had the advertising links been to sites concerned with leather crowns and not so specifically targeted to Italian footwear, the Panel might well have come to a different conclusion.”