The Complainant is Roberto Cavalli S.p.A of Milan, Italy, represented by Studio Legale Jacobacci & Associati of Italy.
The Respondent is Roberto Cavalli Outlets of China. 2. The Domain Names and Registrar
The disputed domain name is (the “Disputed Domain Name”) is registered with B (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2014. On January 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 15, 2014, 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”).
On January 16, 2014, the Center transmitted an email to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding, to which the Respondent did not reply.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceedings commenced on January 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2014.
The Center appointed Soh Kar Liang as the sole panelist in this matter on January 22, 2014. 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 in the business of luxury fashion and manufactures luxury clothing and accessories for women and men. The Complainant was established in 1978 and has been using trademarks comprising the word “Cavalli” which is derived from the name of the Italian designer Mr. Roberto Cavalli who exhibited his first collection in Florence, Italy, in 1972. These include the trademark ROBERTO CAVALLI. Products under the ROBERTO CAVALLI mark are marketed around the world and have been featured on numerous publications, including scholarly books on fashion design.
The Complainant owns various trademark registrations for ROBERTO CAVALLI, including:
Jurisdiction
Trade Mark No.
Registration Date
International
735171
May 8, 2010
European Union (Community Trade Mark, “CTM”)
752196
July 30, 1999
United States of Ameria
2305384
January 4, 2000
In particular, the International registration 735171 which designates China relates to a stylized version of the ROBERTO CAVALLI mark as shown below:
The Complainant also holds the domain name registration for .
Information about the Respondent beyond that contained in the WhoIs record of the Disputed Domain Name is limited. The WhoIs record states the city as “hongkong” but indicates the state/province as “shanghai”. The street refers to “roberto cavalli outlets” without any recognizable street name, while the telephone and fax numbers repeat the identical numbers of the postal code.
The Disputed Domain Name was registered on January 25, 2013. The Disputed Domain Name resolves to a website which prominently features the ROBERTO CAVALLI mark, including the stylized version shown above, in association with the offer of various leather accessory products (e.g., bags, wallets) for sale. The website also appears to offer online shopping cart facilities. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
a) The Disputed Domain Name is confusingly similar to the ROBERTO CAVALLI mark. It contains the ROBERTO CAVALLI mark. The addition of “outlets” does not detract from the confusion. Instead, it leads Internet users to believe that the Disputed Domain Name is an extension of the Roberto Cavalli Group.
b) The Respondent has no rights or any legitimate interests in the Disputed Domain Name. The Respondent did not obtain any form of license to use the ROBERT CAVALLI mark. The Respondent is not associated to the Complainant or its distribution network. The Respondent is also not commonly known in the normal course of business by the mark ROBERTO CAVALLI.
c) The Disputed Domain Name was registered and used in bad faith. The ROBERTO CAVALLI mark is well-known and the Respondent should have been aware of its existence. There is no evidence of bona fide noncommercial or legitimate fair use by the Respondent. The Disputed Domain Name is used to sell “Roberto Cavalli” handbags. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussions and Findings 6.1 Language of Proceedings
The language of the registration agreement is Chinese and the default language of the proceeding is therefore Chinese. However paragraph 11(a) of the Rules empowers the Panel to determine otherwise having regard to the circumstances of the proceeding.
The Complainant has requested for the language of this proceeding to be English. Having reviewed the circumstances of this case, the Panel hereby determines that the language of the proceeding shall be English. In arriving at this decision, the Panel took the following factors into consideration:
a) The website resolved from the Disputed Domain Name appears to be entirely in English;
b) The WhoIs details of the Disputed Domain Name associates the Respondent with Hong Kong, China, where English is a regular language of commerce;
c) Neither did the Respondent indicate any language preference nor object to the Complainant’s request that English be adopted;
d) By failing to file a Response, the Respondent has elected not to participate in the proceeding;
e) The Complaint has already been filed in English. Insisting that the proceeding should be in Chinese will lead to delay to the proceeding and higher burden on the Complainant; and
f) There is no foreseeable benefit to the parties if the language of the proceeding is Chinese. 6.2 Discussion
To succeed in this proceeding, the Complainant must establish all three limbs of paragraph 4(a) of the Policy, namely;
a) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) The Disputed Domain Name has been registered and is being used in bad faith.
The Panel proceeds to consider each of these three limbs in turn. A. Identical or Confusingly Similar
Based on the evidence, the Complainant has clearly demonstrated that it owns trademark rights in the ROBERTO CAVALLI mark. It is also clear to the Panel that the Disputed Domain Name incorporates the ROBERTO CAVALLI mark in its entirety. The only difference is the addition of the descriptive suffix “outlets” in the Disputed Domain Name. Consistent with the consensus of previous UDRP panels, the Panel is of the view that the descriptive suffix “outlets” does not assist to distinguish the Disputed Domain Name from the ROBERTO CAVALLI mark. Accordingly, the Panel finds the Disputed Domain Name to be confusingly similar to the ROBERTO CAVALLI mark and holds that the first limb of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
It is the consensus of previous UDRP panels that a complainant is only required to show a prima facie case. The Complainant has confirmed that the Respondent is neither affiliated with nor authorized by the Complainant in relation to the ROBERTO CAVALLI mark. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name. In relation to how the Respondent has been using the Disputed Domain Name, the evidence shows the prominent use the ROBERTO CAVALLI mark, including the stylized version registered by the Complainant, in relation to handbags and other accessories on the website resolved from the Disputed Domain Name. The website does not disclose the relationship between the Respondent and the Complainant and even contains a copyright claim “Copyright @2013 roberto cavalli outlet”.
Based on the evidence before the Panel, it is inconceivable that the Respondent was not aware of the ROBERTO CAVALLI mark and must have registered it to operate the commercially-oriented website resolved therefrom. Such use cannot be regarded as a bona fide noncommercial use.
In the circumstances, the Panel is of the view that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since the Respondent did not submit a Response, the prima facie case has not been rebutted and the second limb of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy identifies the following situation of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel has already found that the Respondent must have been aware of the ROBERTO CAVALLI mark when registering the Disputed Domain Name. The manner in which the ROBERTO CAVALLI mark is used conspicuously on the website resolved from the Disputed Domain Name is associated with the offer of products for sale under the ROBERTO CAVALLI mark and promotes a strong impression that the Respondent is associated with or authorized by the Complainant. There is an obvious intent to attract Internet users for commercial gain.
The evidence before the Panel convincingly shows that the Respondent by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to the websites resolved therefrom by creating a likelihood of confusion with the Complainant’s ROBERTO CAVALLI mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products on the website. The Panel is of the view that the circumstances of this case match the situation of bad faith outlined in paragraph 4(b)(iv) of the Policy.
Further, the Panel notes the use of undoubtedly fictitious contact particulars in relation to the registration of the Disputed Domain Name. Paragraph 2 of the Policy imposes a warranty by the domain name registrant that statements provided in the registration agreement are complete and accurate. The contact details of the registrant are clearly important parts of the same. By providing fictitious contact details, the Respondent has evidently failed to observe the warranty. Previous UDRP panels have also established that the deliberate failure to provide complete contact details is a failure to discharge the duty of a registrant to act honestly and is a basis for finding bad faith use and registration (see Volkswagen Financial Services AG v. tangzhou,WIPO Case No. D2013-0574; Immobilière Dassault SA, Groupe Industriel Marcel Dassault v. DuanZuoChun,WIPO Case No. D2011-2106; ECCO Sko A/S v. Protected Domain Services – Customer ID: NCR-2448048/jizhiteam,WIPO Case No. D2010-1113; Farouk Systems Inc. v. David,WIPO Case No. D2009-1245).
The Complainant has also made a very serious allegation against the Respondent of selling counterfeit goods on the website resolved from the Disputed Domain Name. Although the Complainant has not corroborated the allegation with documentary evidence, such is the nature of such allegation that a reasonable person in the position of the Respondent will deny it strenuously if it were not true. It is therefore disappointing that the Respondent has chosen to remain silent. By reason of this, the Panel hereby draws an adverse inference that the Respondent is unable to deny this allegation.
Having regard to all of the above, the Panel holds that the Complainant has shown that the Respondent has registered and is using the Disputed Domain Name in bad faith. Accordingly, the third limb of paragraph 4(a) of the Policy is also established. 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 domain name be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: March 6, 2014
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