The Complainant is Salvatore Ferragamo S.p.A. of Firenze, Italy, represented by Studio Legale SIB, Italy.
The Respondent is China Ferragamo of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. 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 name. On May 4, 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 14, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On May 15, 2012, the Complainant confirmed their request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 29, 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, especially shoes, handbags and leather goods, under the mark FERRAGAMO since 1927.
The Complainant’s products can be found at retail stores in many countries around the world, including, Italy, United States of America, 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. 0000056351 – 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; 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. 000103259 – 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 numerous domain names consisting of the mark FERRAGAMO. For example: , , , and many others.
The Complainant promotes and markets its products through websites under its domain names.
The disputed domain name was registered on April 18, 2011.
The disputed domain name resolves to an online marketplace, which displays the Complainant’s name and offers for sale shoes under the FERRAGAMO mark. 5. Parties’ Contentions A. Complainant
The Complainant argues that it has received, over the years, substantial publicity by virtue of the quality and uniqueness of its products. The Complainant contends that various museums, including the Los Angeles County Museum of Art in the United States and the Museum of Contemporary Art in Shanghai, China, presented exhibitions, displaying products designed by Salvatore Ferragamo.
The Complainant further argues that its products and marks are advertised through the most famous fashion magazines. The Complainant contends that it spent an average of EUR 40 million per year to advertize and promote 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 recognize and rely 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 parties.
The Complainant further argues that the disputed domain name is identical or confusingly similar to the Complainant’s FERRAGAMO mark. The Complainant contends that the additional term “china” in the disputed domain name is not sufficient to avoid confusing similarity between the disputed domain name and the Complainant’s mark.
The Complainant further argues that the Respondent is not known by the disputed domain name and that the Complainant has not licensed or otherwise authorized the Respondent to use its FERRAGAMO trademark.
The Complainant further argues that the Respondent sells counterfeit products of the Complainant at the website under the disputed domain name. The Complainant supported this contention with an expert’s statement.
The Complainant further argues that the Respondent’s actions confuse the Complainant’s potential customers to believe the Respondent is associated with the Complainant.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue – Language of the Proceedings
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 Agreement for the disputed domain name 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 disputed domain name consist of English characters, rather than Chinese letters;
b) The website, to which the disputed domain name resolves to, displays some words in English;
c) The Respondent did not object to the Complainant’s request that English be the language of proceedings, and was given the opportunity to file a Response in either Chinese or English but decided not to do so.
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 accepting the Complaint submitted 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. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to prove that the disputed domain name is 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. 0000056351– 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; 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. 000103259 – FERRAGAMO, with the registration date of April 20, 1998, and many more.
The disputed domain name integrates the Complainant’s FERRAGAMO trademark in its entirety, as a dominant element.
The disputed domain name differs from the FERRAGAMO trademark by the additional geographical term “china”, a hyphen and the gTLD suffix “.com”.
The Panel finds the addition of the geographical term “china” does not serve to sufficiently distinguish or differentiate the disputed domain name from the Complainant’s FERRAGAMO trademark, as “china” is a country in which the Complainant products are marketed. It is clear that the most prominent element in the disputed domain name 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).
Also, the use of a hyphen between the Complainant’s mark and the term “china” in the disputed domain name cannot avoid confusing similarity (see Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281).
The addition of the gTLD suffix “.com” to the disputed domain name 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 name. Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has 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 Complainant has not licensed or otherwise permitted the Respondent to use the FERRAGAMO trademark, or a variation thereof.
The Respondent has not submitted a Response and has not provided any evidence to show any rights or legitimate interests in the disputed domain name 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 name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that shall be evidence of bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name 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 has owned 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 name (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 a respondent, if by using the disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name is resolved 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 name resolved to.
The disputed domain name is 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, Inc v. 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 also be considered as an indication of bad faith under paragraph 4(b)(iv) of the UDRP.
In this Panel’s view, 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 the disputed domain name to promote the sale of goods bearing the Complainant’s FERRAGAMO mark, while using the Complainant’s name and mark on the website. The website is in the Chinese language, stating among other things that it is the Complainant’s official website.
Using the disputed domain name 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 name 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 name 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, Internet 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 name are counterfeit products of the Complainant’s the Complainant supported this claim with an expert’s statement, who examined a product that was ordered from the website under the disputed domain name. It was held that offering for sale seemingly counterfeit products of the Complainant is also evidence of bad faith (see Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the distinctiveness of the Complainant’s trademark and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is 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 name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: July 12, 2012
Full & Egal Universal Law Academy