The Complainant is Salvatore Ferragamo S.p.A of Firenze, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Qing Chun, also known as Wu Wei of Beijing, China. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2012. On October 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 30, 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.
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 November 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2012.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on December 3, 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 a well known Italian corporation, whose origin dates back to 1927, that is in the business of manufacturing, marketing, and selling fine shoes, handbags, fashion accessories, and luxury goods.
The Complainant’s products can be found in retail stores located all over the world, including China, the Respondent’s country of record.
The Complainant registered the mark FERRAGAMO in Italy in 1950 and currently holds over 400 registrations for FERRAGAMO covering more than 100 countries.
The Respondent registered the disputed domain names , and in the name of Qing Chun, on November 21, 2011. On the same day, the Respondent registered the disputed domain name in the name of Wu Wei. All four disputed domain names are currently inactive but they once resolved to a website selling luxury goods, presumably fake, from competing brands. 5. Parties’ Contentions A. Complainant
The Complainant’s submissions can be summarized as follows:
i. As the disputed domain names were registered on the same day under identical addresses of record, and the website associated with the disputed domain names was also the same, there is no doubt that the four disputed domain names are united under the same common control;
ii. The above circumstances demonstrate that the Respondents Qing Chun and Wu Wei are in fact one and the same person using a fictitious alias, and in accordance with previous UDRP decisions, the Complainant is entitled to consolidate its claims concerning the four disputed domain names in a single Complaint;
iii. The Chinese suffixes “xiexijiage”, “baobao”, and “xiangshui” can be translated into English as “sale shoes”, “kid” and “perfumes”, respectively, which are generic terms referring to the core business of the Complainant, while “2012” is simply a temporal indication;
iv. As held in numerous decisions, the inclusion of the Complainant’s entire FERRAGAMO mark in the disputed domain names is sufficient to establish confusing similarity for the purposes of the Policy;
v. Because the Complainant also distributes its products in China, the addition of suffixes in Chinese may lead visitors to believe that the disputed domain names resolve to a local website created by the Complainant for its customers;
vi. The Respondents have not been authorized to apply for any domain names incorporating the Complainant’s marks, nor do they own any trademark registration corresponding to the disputed domain names;
vii. The Respondents are not commonly known by the disputed domain names, and neither do they make any legitimate commercial use thereof;
viii. To the best of the Complainant’s knowledge, the goods offered for sale until recently on the Respondents’ website were counterfeit, and consequently the value of Complainant’s FERRAGAMO mark was diluted;
ix. The current inactivity of the disputed domain names is a device commonly employed by counterfeiters to intersperse use of websites selling counterfeit goods with sporadic or intermittent non-use to discourage right holders from taking legal action;
x. From a preliminary search on the Internet, it has emerged that the Respondents own several domain names incorporating well known third party trademarks in the field of fashion and sports including , , , and . B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
i. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
iii. the disputed domain names were registered and are being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. A. Preliminary Issues: Consolidation and Respondent’s common identity
The Panel is requested to consolidate in a single proceeding the Complainant’s claim relating to the disputed domain names , and registered by the Respondent Qing Chun, with the Complainant’s claim concerning the disputed domain name , registered by the Respondent Wu Wei.
Paragraph 4(f) of the Policy permits consolidation where the Complainant and the Respondent in multiple proceedings seek to consolidate their disputes before a single administrative panel. Either party may make the request.
Likewise, paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
In the instant proceedings, the Complainant alleges that the disputed domain names are effectively controlled by the same person operating under two different names or aliases. The Complainant supports its contention on the following facts: i) all disputed domain names were registered on the same day with the same Registrar; ii) the two Respondents entered the same address on the WhoIs database for each disputed domain name; and iii) all disputed domain names were linked to the same portal.
Because the Complainant proves its assertions with pertinent documentary evidence, the Panel determines that the Qing Chun and Wu Wei should be treated as one and the same Respondent, and consequently that consolidation of the Complainant’s claims in a single administrative proceeding is warranted. See Google Inc. v. Shuying Zhang / - / zhang shuying, NAF Claim No. FA1206001449297 and Google Inc. v. zhang shu ying/ zhangshuying / LinYu / Xiamen eName Technology Co., Ltd., NAF Claim No. FA1207001455178 (consolidating two administrative proceedings as all of the disputed domain names identified the same city in China and the same two e-mail addresses in the registrant information, coupled with the fact that the Respondents’ names were substantially the same). B. Identical or Confusingly Similar
The question under paragraph 4(a)(i) of the Policy is whether the disputed domain names are identical or confusingly similar to the Complainant’s trademark, not whether the website to which the disputed domain names resolve will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini,WIPO Case No. D2002-0834 (a complainant need not to establish actual confusion because the test is objective, not subjective).
The Complainant proves to hold registered trademark rights as well as longstanding and widespread goodwill in the mark FERRAGAMO. The Complainant goes on to allege that the disputed domain names are confusingly similar to its registered trademark because the Respondent’s domain names incorporate the Complainant’s mark in its entirety. The Complainant contends that the addition of generic terms in Chinese does not detract from the existing confusing similarity between the disputed domain names and its FERRAGAMO mark.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains that the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
In taking this approach, the Panel finds that the term FERRAGAMO is immediately recognizable as a trademark within the disputed domain names.
The Panel performed its own inquiry into the meaning of the words or expressions appended to three of the disputed domain names, having found out that “xiexijiage” relates to shoes, “baobao” was used in the context of purses or bags rather than kids as submitted by the Complainant, and “xiangshui” makes reference to perfumes. The nouns in question are fitting with the Complainant’s products bearing the FERRAGAMO mark. As for the number “2012”, this is a time indication likely referring to the present year.
In sum, by looking at the overall impression of the signs at issue, and taking into account the fame of the FERRAGAMO mark, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s mark despite the addition of descriptive or numeric terms, even if expressed in Latin script’s transliterations from Chinese.
The Complainant has thus met the first threshold of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
“i. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain names. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306.)
The Complainant warrants to have never licensed or authorized the Respondent to apply for any domain name incorporating its FERRAGAMO mark. The Complainant also represents that the Respondent is not known by the disputed domain names. On these credible assertions and the evidence put forward regarding the use to which the disputed domain names were subjected in the past, the Panel finds that the Complainant has established a prima facie case against the Respondent.
In the absence of a Response, this Panel may draw appropriate inferences from the Respondent’s default. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Further, the printouts of the websites to which the disputed domain names used to resolve show that the Respondent’s common homepage promoted the sale of products from competing luxury brands, which products are presumed to be non-genuine as they were being marketed outside of their customary distribution channel, namely exclusive and directly-owned retail stores. See Jean Cassegrain S.A.S. v. Abel Magee,WIPO Case No. D2011-1572 (the panel agrees with the complainant that given that the bags shown in the respondent’s sites are offered in large numbers and at prices substantially lower than those of genuine Longchamp bags, the goods offered by the respondent are most likely counterfeit).
In the Panel’s view, the Respondent’s short-lived and probably infringing use of the disputed domain names can hardly be characterized as a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy. See Guccio Gucci S.p.A. v. Edardy Ou,WIPO Case No. D2011-1028 (use of a trademark to sell what appears to be counterfeit goods using the complainant’s Gucci brand and other well-known brands is clearly not a bona fide use in relation to goods or fair use and is not noncommercial.)
As a result, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to prove that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] web site or location or of a product or service on your [the respondent’s] web site or location.”
The Complainant alleges that the Respondent registered the disputed domain names with a view to taking unfair advantage of the reputation of the Complainant’s mark. The Complainant also posits that the registration of the disputed domain names obviously confuses potential customers as to the purported Respondent’s affiliation with the Complainant as the latter distributes its products in China.
The Complainant further asserts that, to the best of its knowledge, the Respondent used the disputed domain names for some time to offer counterfeit goods bearing the FERRAGAMO mark, with a clear intent for commercial gain, and pretending to pass off as the Complainant, therefore diluting the value of its trademark.
In view of the global and longstanding use of the FERRAGAMO mark, it is only reasonable for the Panel to assume that, under the circumstances, the Respondent registered the disputed domain names to cash in on the FERRAGAMO mark’s fame. This circumstance alone is sufficient to prove bad faith registration of the disputed domain names. See Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641 (where the selection of the disputed domain names is so obviously connected to the complainant’s well-known trademark, their very use by someone with no connection with the complainant suggests opportunistic bad faith.)
As for the Complainant’s allegation of counterfeiting, even if unsupported with direct evidence or expert testimony, the Panel finds this allegation credible in light of the current inactivity of the disputed domain names, the content of the once operational website common to all disputed domain names, and the unlikelihood that the luxurious goods once advertised under the disputed domain names were marketed with the respective trademark owners’ consent, as explained under section 6.C supra. The presumption of counterfeiting has been held to constitute bad faith use within the meaning of the Policy. See IM Production v. 50448207 Qiang Pa MAXINTRADING(at)LIVE DOT COM,WIPO Case No. D2011-2098. (the respondent's use of the disputed domain name to sell presumably counterfeit goods under the complainant’s mark is evidence of bad faith use).
Further, in the Panel’s view, the unsavory association with presumably fake goods to which the disputed domain names were subjected amounts to bad faith under paragraph 4(b)(iv) of the Policy. See Lacoste Alligator S.A. v. Monique Marcil, Molou Hudong,WIPO Case No. D2012-0851 (by engaging in the sale of counterfeit imitations of the complainant’s LACOSTE products, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of those websites, in violation of paragraph 4(b)(iv) of the Policy); see also Moncler S.r.l. v. Daniel Park,WIPO Case No. D2011-0488 (the respondent used the complainant’s known trademark to attract users to websites offering counterfeited MONCLER products. This is evidence of the intention by the respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with the complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or of a product or service on the respondent’s website).
In the premises, the Panel finds that the Respondent’s prior use coupled with the current non-use of the disputed domain names constitutes bad faith use within the meaning of the Policy.
The Complainant has therefore discharged its burden in connection with 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.
Reynaldo Urtiaga Escobar
Sole Panelist
Date: December 17, 2012
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