The Complainant is Salvatore Ferragamo S.p.A. of Florence, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Wang Sui of Xiamen, Fujian, China. 2. The Domain Names and Registrar
The disputed domain names , and are registered with HiChina Zhicheng Technology Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2012. On May 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 10, 2012, 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. On May 10, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On May 11, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments on the language of proceedings by the specified due date. The Center sent an email communication to the Complainant on May 18, 2012 inviting the Complainant to submit an amendment to the Complaint with regards to the Mutual Jurisdiction clause in the Complaint, given that the principal office of the Registrar was wrongly listed in the Complaint. The Complainant filed an amended Complaint on May 21, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 20, 2012. 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 Salvatore Ferragamo S.p.A., an Italian based corporation, which engages in manufacturing, marketing and selling fashion products and especially shoes, handbags and leather goods, under the mark FERRAGAMO since 1927.
The Complainant's products are found at retail stores in many countries around the world, including, Italy, the United States of America, Australia, Canada, China, Japan, Spain and many others.
The Complainant is the owner of numerous worldwide trademark registrations for the mark FERRAGAMO. For example: Italian trademark registration No. 56351– FERRAGAMO (logo), with the registration date of December 20, 1937; International trademark registration No. 397649 – FERRAGAMO, with the registration date of March 23, 1973, designated, among others to China and France; International trademark registration No. 839639 – FERRAGAMO, with the registration date of September 7, 2004, designated, among others to Australia; United States trademark registration No. 1031093– FERRAGAMO, with the registration date of January 20, 1976; Chinese trademark registration No. 1340196 – FERRAGAMO (in Chinese characters), with the registration date of December 7, 1999; Community trademark registration No. 103259 – FERRAGAMO, with the registration date of April 20, 1998, and many more.
The Complainant also developed its presence on the Internet and is the owner of several domain names consisting of the mark FERRAGAMO. For example: , , and .
The Complainant promotes and markets its products through websites under its domain names.
The disputed domain names were registered on December 14, 2011.
At the time of filing the Complaint, the disputed domain names , and direct Internet users to the website at “ww.”, which is an online marketplace displaying the Complainant's name and offer sale fashion products under the FERRAGAMO mark.
At the time of this decision, the disputed domain name resolves to an error page. 5. Parties’ Contentions A. Complainant
The Complainant argues that it received substantial publicity over the years by virtue of the quality and uniqueness of its products. The Complainant contends that various museums, including the Los Angeles County Museum of Art and the Guggenheim Museum in New York presented exhibitions, displaying products designed by Salvatore Ferragamo.
The Complainant further argues that its products and marks were advertised through the most famous fashion magazines. The Complainant contends that it spent an average of 40 million Euros per year for advertising and promoting its products, including products bearing the FERRAGAMO trademark.
The Complainant further argues that due to the Complainant's extensive advertising and promotional efforts, the FERRAGAMO trademark has become extremely well-known in the fashion industry and to the public. The Complainant contends that the public recognizes and relies on the FERRAGAMO trademark as a symbol for quality products by the Complainant.
The Complainant further argues that the FERRAGAMO mark is unique and that there are no other identical or similar marks or names used by third party.
The Complainant further argues that the disputed domain names are identical or confusingly similar to the Complainant's FERRAGAMO mark. The Complainant contends that the additional words "australia", "london", "sale", “good”, “shoes” in the disputed domain names are not sufficient to avoid confusing similarity between the disputed domain names and the Complainant's mark.
The Complainant further argues that the Respondent is not known by the disputed domain names and that the Complainant has not licensed or otherwise authorized the Respondent to use its FERRAGAMO trademark.
The Complainant further argues that the Respondent's actions confuse the Complainant’s potential customers to believe the Respondent is associated with the Complainant.
The Complainant further argues that the Respondent sells counterfeit products of the Complainant at the website under the disputed domain names.
The Complainant further argues that the Respondent's action can be considered as a "pattern of conduct".
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreements for the disputed domain names is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The website, to which the disputed domain names resolve or used to resolve, is operating while using the English language exclusively;
b) The disputed domain names consist of English characters, rather than Chinese letters;
c) The Respondent did not object to the Complainant's request that English be the language of proceedings.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns numerous worldwide trademarks registrations for the mark FERRAGAMO. For example: Italian trademark registration No. 56351– FERRAGAMO (logo), with the registration date of December 20, 1937; International trademark registration No. 397649 – FERRAGAMO, with the registration date of March 23, 1973, designated, among others to China and France; International trademark registration No. 839639 – FERRAGAMO, with the registration date of September 7, 2004, designated, among others to Australia; United States trademark registration No. 1031093– FERRAGAMO, with the registration date of January 20, 1976; Chinese trademark registration No. 1340196 – FERRAGAMO (in Chinese characters), with the registration date of December 7, 1999; Community trademark registration No. 103259 – FERRAGAMO, with the registration date of April 20, 1998, and many more.
The disputed domain names integrate the Complainant's FERRAGAMO trademark in its entirety, as a dominant element.
The disputed domain names differ from the FERRAGAMO trademark by the additional geographical terms “australia”, "london", the words "good", "shoes" and "sale" and the gTLD suffixes “.com”.
The addition of the geographical terms “australia” and "london" do not serve to sufficiently distinguish or differentiate the disputed domain names from the Complainant’s FERRAGAMO trademark, as "australia" and "london" are locations where the Complainant conducts business. The terms "good", "shoes" and "sale" also cannot establish sufficient distinctiveness as they are common words that relate to the Complainant's business and products. It is clear that the most prominent element in the disputed domain names is the term “ferragamo”, which lacks an English dictionary meaning.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD suffix “.com” to the disputed domain names does not avoid confusing similarity (see, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD suffix “.com” is without legal significance since the use of a gTLD is technically required to operate the domain names.
Consequently, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the FERRAGAMO trademark, or a variation thereof.
The Respondent had not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the FERRAGAMO trademark since the year 1937. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by the Respondent, if by using the disputed domain names, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain names resolve to, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain names resolve to.
The disputed domain names are confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Incv. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent's use of a highly distinctive trademark of the Complainant is also suggestive of the Respondent's bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant. (See Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司,WIPO Case No. D2007-0934, stating that: “the Panel finds that the DANFOSS trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.”)
The Respondent is using or has used the disputed domain names to promote the sale of goods bearing the Complainant's FERRAGAMO mark, while using the Complainant's name.
Using the disputed domain names to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain names with knowledge of the Complainant and of the use the Complainant is making with its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain names is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Respondent’s website falls under paragraph 4(b) of the Policy.
Moreover, the Complainant claims that the goods offered for sale at the website under the disputed domain names are seemingly counterfeit products of the Complainant's. Offering for sale counterfeit products of the Complainant under the disputed domain names constitutes further evidence of bad faith (see: Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
Paragraph 4(b)(ii) of the Policy provides that there is evidence of bad faith where a respondent registers a domain name in order to prevent the owner of the trademark or service mark from reflecting its mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
The Complainant contends that the Respondent engaged in “a pattern of bad faith conduct” due to the Respondent's registration of multiple domain names that relate to the Complainant.
Indeed a “pattern of bad faith conduct” is previous conduct found to be in breach of the Policy by the registration of a large number of domain names subject of one complaint (See Time Warner Entertainment Company, L.P. v. HarperStephens,WIPO Case No. D2000-1254). A "pattern of conduct" can also be found with the registration of domain names against multiple complainants. (See Société BIC v. LaPorte Holdings, LLC,WIPO Case No. D2005-0342).
However, in light of the above, it is unnecessary to decide whether the circumstances of the current case would warrant a finding of a pattern of bad faith conduct.
Finally, based on the evidence presented to the Panel, including the late registration of the disputed domain names, the distinctiveness of the Complainant's trademark and the Respondent's use of the disputed domain names, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: July 1, 2012
Full & Egal Universal Law Academy