WIPO Domain Name Decision D2018-2402 for dieselnegozio.online
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Diesel S.p.A. v. WhoIsGuard, Inc. / Myra Kern Case No. D2018-2402 1. The Parties
The Complainant is Diesel S.p.A. of Breganze, Italy, represented by Studio Barbero, Italy.
The Respondent is WhoIsGuard, Inc. of Panama City, Panama / Myra Kern of Barrow-in-Furness, Armenia. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2018. On October 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 October 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2018.
The Center appointed Theda König Horowicz as the sole panelist in this matter on November 23, 2018. 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 an international fashion company founded in Italy by Mr. Renzo Rosso about 40 years ago. The Complainant is known for commercializing clothes collections, including jeans, premium casual wear and accessories.
Over the years, the Complainant developed the DIESEL brand and its founder, Mr. Rosso, also created a fashion holding company which owns other famous brands such as Just Cavalli, Marni and Viktor&Rolf, all brands reflecting a certain lifestyle.
The Complainant is commercially present worldwide through a large number of stores, including mono-brand shops.
The commercialization of the DIESEL fashion goods is supported by intensive advertising campaigns which are known for their disruptive and provocative style and which have been receiving awards and prizes. The Complainant also widely promotes the DIESEL fashion goods through the Internet and the social media.
The Complainant is the owner of many trademark registrations including the famous DIESEL name, notably:
- Italian Trademark Registration No 604 192 (word mark) of October 4, 1993 in classes 3, 9, 14, 16, 18, 24 and 25.
- International Trademark Registration No 608499 (word mark) of October 4, 1993 in classes 3, 9, 14, 16, 18, 24, and 25.
- US Trademark Registration No 1989390 (word mark) of July 30, 1996 in classes 3, 9, 14, 18, 24, and 25.
The Complainant also registered numerous domain names consisting of or comprising the word “DIESEL”, including “” which hosts the Complainant’s principal website dedicated to the “DIESEL” brand and which generates a significant number of visits by Internet users.
The Respondent registered the disputed domain name on August 30, 2018, and pointed it to a website displaying, without any disclaimer of non-affiliation, the “DIESEL” trademark and some images taken from the Complainant’s official ad campaigns. Furthermore, the Respondent is offering for sale unauthorized DIESEL products at discounted prices.
The Complainant’s legal representative sent a cease and desist letter on September 7, 2018, to the Respondent at the shielded email address indicated in the WHOIS database requesting to immediately deactivate the website and to transfer the disputed domain name to the Complainant.
At the same time, the Complainant’s legal representative filed with the privacy service company a request for disclosure of the contact details of the underlying registrant of the disputed domain name. When receiving the information, the Complainant sent on September 17, 2018, a cease and desist letter to the Respondent at the email address given by the privacy service company which appeared to be false respectively inaccurate.
Following a test purchase on the website operated by the Respondent where payment was accepted while the product was never delivered, the Complainant’s legal representative sent a formal communication to the Hosting Provider to request immediate suspension/deactivation of the disputed domain name and to the Registrar of the disputed domain name, request which was accepted.
On October 5, 2018, the Complainant’s legal representative sent a reminder to the Respondent and also the Registrar and to the privacy shield company since the disputed domain name was reactivated. 5. Parties’ Contentions A. Complainant
The Complainant makes the following allegations:
- The disputed domain name is confusingly similar to the “DIESEL” trademark