The Complainant is Fendi Adele S.r.l. of Rome, Italy, represented by Studio Legale SIB, Italy.
The Respondent is PrivacyP of Queensland, Australia / Liao Yani of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Cloud Group Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 5, 2012.
The Center verified that the Complaint together with the amendment to 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 December 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Alexandre Nappey as the sole panelist in this matter on January 11, 2013. 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 Italian company active in the business of producing, marketing and selling high-end articles of clothing and accessories. It was launched in 1925 as a fur and leather shop in Rome, but today is a multinational luxury goods brand owned by the fashion group LVMH.
The Respondent registered the disputed domain name on April 1, 2012. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions:
The Complainant has sought to protect its rights in and to the trademark FENDI and to maintain its exclusivity therein by obtaining, worldwide, more than 800 registrations for FENDI and similar marks in more than 100 countries since 1970.
The Complainant is notably the owner of the following registered trademarks relevant with the present dispute:
- Community Trademark Registration No. 003500535 for FENDI, dating back to October 31, 2003 covering goods in class 3, 9, 14, 18, 25;
- Australian Trademark Registration No. 303035 for FENDI, dating back to December 14, 1976, covering goods in class 25.
In addition, since 1995, the Complainant has owned registrations for several domain names comprising the mark FENDI among which , whereon the Complainant promotes its products bearing the trademark FENDI.
The Complainant claims that the Respondent’s domain name is confusingly similar to the Complainant’s FENDI trademark. The disputed domain name only differentiates itself from the Complainant’s mark by the inclusion of the suffix “.com” and the descriptive word “Italia”.
Then, the Complainant asserts that the Respondent is not affiliated in any way with the Complainant and, to their best knowledge, does not own any Chinese trademark applications or registrations for “Fendiitalia” or any similar marks in connection with any goods or services. In addition, the Complainant claims that no licence or authorization has been granted to the Respondent to use its FENDI trademark, or to apply for any domain name incorporating such mark.
Lastly, the Respondent’s registration of the disputed domain name obviously confuses potential customers as to the Respondent’s affiliation with the Complainant and the website operated from the disputed domain name offers for sale counterfeit items of clothing bearing Complainant’s marks, with a clear intent for commercial gain. Therefore, the domain name has been registered and is used in bad faith.
As a matter of fact, 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
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The disputed domain name is 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 name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate.”
Having consideration to the parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following. A. Identical or Confusingly Similar
The Complainant clearly has rights in the FENDI trademark. Those rights have been recognized in previous decisions under the Policy. See for instance Fendi Adele S.r.1. v. Webmaster Ops. LLC.,WIPO Case No. D2007-1579.
Having established such rights, the question under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
The Complainant argues that it is confusingly similar because the disputed domain name incorporates the entirety of its mark. Previous decisions under the Policy involving the entire incorporation of the Complainant’s mark reached a similar conclusion: see e.g., Fendi Adele S.r.l v. He Guoqiang,WIPO Case No. D2011-1309; Fendi Adele S.r.l v. Paul Disley/Im Flying,WIPO Case No. D2006-1504; Fendi Adele S.r.l v. SpeedyWeb,WIPO Case No. D2006-1602.
This Panel reaches a similar conclusion for the disputed domain name in this case. It entirely incorporates the Complainant’s mark as its first element and adds the suffix “italia”. This geographical addition does little to differentiate the disputed domain name from the Complainant’s mark. As the Complainant’s argues, the geographical addition may serve only to emphasise the mark by indicating a geographical connection with the Complainant’s business and location.
For these reasons, the Panel finds that the Complainant has established this first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out examples for a respondent to demonstrate that it has rights or legitimate interests in respect of a domain name.
“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 your 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.”
The Panel is of the opinion from the available evidence on the record that there is no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark under any circumstances.
As the Respondent is in default and the Complainant has established a prima facie case, the Panel is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
The mere association of the Complainant’s FENDI mark and the geographic word “italia” indicates that the Respondent, when registering the disputed domain name, was perfectly aware that FENDI was a trademark belonging to an Italian high fashion house. The Panel concludes that the domain name has been registered in bad faith.
The Complainant states that the disputed domain name is being used in bad faith. The disputed domain name is pointing to a website offering trademarked goods, which the Complainant alleges as being counterfeit products.
In light of its notoriety, numerous trademark registrations of the Complainant in several countries including China and recognition of the Complainant as a leading fashion house using the trademark FENDI, the Panel agrees that the Respondent has registered the disputed domain name being fully aware of the Complainant's reputation. In the Panel’s view, although there is not enough evidence to conclude that the products on the website are counterfeit, this Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood confusion with the Complainant’s trademarks.
The Complainant has neither granted license nor otherwise allowed the Respondent to use its trademark or to apply for or use any domain name incorporating this mark. It is highly likely that the Internet users would relate the disputed domain name with the Complainant's trademark FENDI on account of confusing similarity between the Complainant's trademark and the disputed domain name.
The Panel, therefore, in the facts of the present case, concludes that the disputed domain name is also being used in bad faith. 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.
Alexandre Nappey
Sole Panelist
Date: January 29, 2013
Full & Egal Universal Law Academy