Complainant is Salvatore Ferragamo S.p.A., of Florence, Italy, represented by Studio Legale SIB, Italy.
Respondent is Wendy Henle of Kentucky, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2013. On October 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 30, 2013.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 14, 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
Complainant is a joint stock company with principal place of business in Florence/Italy that is active in the business of manufacturing, marketing and selling shoes, handbags, and other articles.
Complainant has provided evidence that it is the registered owner of at least the following trademarks:
- Word mark: FERRAGAMO, United States Patent and Trademark Office (USPTO), Registration Number: 1031093, Registration Date: January 20, 1976, Status: Active;
- Word mark: SALVATORE FERRAGAMO, United States Patent and Trademark Office (USPTO), Registration Number: 1016032, Registration Date: July 15, 1975, Status: Active;
- Word mark: FERRAGAMO, Office for Harmonization in the Internal Market (OHIM), Registration Number: 00103259, Registration Date: April 20, 1998, Status: Active.
The disputed domain name was created on July 20, 2012. Complainant has provided evidence that on September 26, 2013, the disputed domain name redirected to a website at www., offering, inter alia, shoes and handbags under the trademark SALVATORE FERRAGAMO for online sale.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant alleges to have used the trademark FERRAGAMO since at least 1927 with respect to shoes and since 1968 with respect to handbags. The founder of Complainant’s enterprise, Salvatore Ferragamo, began his career in 1914 in Santa Barbara/California and first achieved notoriety by creating hand-made shoes for stars from the film industry by which he finally achieved a worldwide reputation. Complainant’s products can today be found at retail stores as well as duty-free shops all over the world including the United States.
Complainant asserts that the disputed domain name is at least confusingly similar to Complainant’s FERRAGAMO trademark, because it differentiates from Complainant’s trademark only by the suffix “outlet” which describes a service Complainant could easily offer itself and thus is not capable to dispel the finding of confusing similarity.
Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name, because (1) Respondent is not affiliated in any way with Complainant nor has Complainant licensed or otherwise authorized Respondent to use its FERRAGAMO trademark or to apply for any domain names incorporating such mark, (2) the goods offered for online sale on Respondent’s website at “www.” are counterfeit products as evidenced by at least one shirt purchased through Respondent’s website and finally (3) by using Complainant’s trademark SALVATORE FERRAGAMO on Respondent’s website, the latter falsely suggests that it was the trademark owner and that its website was the official trademark owner’s website.
Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) Respondent offers for online sale on its website at “www.” counterfeit items of clothing bearing Complainant’s FERRAGAMO trademark with a clear intent for commercial gain and trying to pass itself off as the trademark owner and (2) Respondent’s making use of the disputed domain names discourages Internet users from locating Complainant’s true website, thereby diluting the value of Complainant’s FERRAGAMO trademark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar at least with the FERRAGAMO trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the FERRAGAMO trademark in its entirety. It has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic term “outlet” (which even refers to a type of business that Complainant could offer itself) is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s FERRAGAMO trademark into the disputed domain name.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) is fulfilled in the case at hand. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate, noncommercial or fair use without intent for commercial gain.
Respondent apparently made use of the disputed domain name by redirecting it to a website at “www.” under which Respondent offered for online sale counterfeit products under Complainant’s trademark SALVATORE FERRAGAMO. The Panel, therefore, concludes that Respondent – irrespective of the alleged reputation of Complainant’s trademarks and business – apparently was aware of said trademarks at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s trademarks and business. Such use of the disputed domain name to redirect Internet users, who are trying to reach Complainant, but due to the confusing similarity of the disputed domain name with Complainant’s FERRAGAMO trademark end up with Respondent’s Internet presence at “www.”, is neither “noncommercial” because it was predominantly for the purpose of generating own revenue, nor is it “fair” because Internet users by confusion are brought to a website which pretends to be an official website set up by Complainant itself, but instead offers counterfeit products of the very same.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on October 9, 2013, nor did Respondent come forward with any other arguments that would have explained Respondent’s (business) activities and, thus, Respondent’s possible rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s FERRAGAMO trademark, to a website which offers counterfeit products under Complainant’s SALVATORE FERRAGAMO trademark without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s FERRAGAMO trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 Complainant.
Stephanie G. Hartung
Sole Panelist
Date: November 26, 2013
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