The Complainant is VICINI S.P.A. of San Mauro Pascoli, Italy, represented by Franzosi Dal Negro Pensato Setti, Italy.
The Respondents are: runs yao of An Hui, China / delao dkeo of Washington D.C., United States of America (“USA”). 2. The disputed domain names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint, concerning the domain names , , , and , was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2014. On June 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 13, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the five previously listed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 16, 2014 providing the registrant and contact information disclosed by the Registrar, informing the Complainant of the existence of multiple respondents and inviting the Complainant to file a separate Complaint for one of the domain names, and file a short amendment to remove said separately-filed domain name from the current Complaint or to provide the Center with a brief amendment to the Complaint, adding the names of both registrar-disclosed registrants as Respondents and demonstrating that both registrants are, in fact, the same entity. The Complainant filed a first amended Complaint on June 18, 2014. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a second amended to the Complaint on June 20, 2014.
The Center verified that the Complaint together with the first and second amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on July 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 28, 2014.
The Center appointed Steven A. Maier as the sole panelist in this matter on July 30, 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 a company registered in Italy. It is a supplier of fashion footwear and leather goods. It is the owner of trademark registrations in various territories worldwide for the words GIUSEPPE ZANOTTI DESIGN together with a signature device. Those trademarks include the following:
- USA trademark number 79051000 for the words GIUSEPPE ZANOTTI DESIGN together with a signature device, filed on February, 2008 in International Class 18 for leather and related goods and in International Class 25 for clothing.
- Community Trade Mark number 010676336 for a device including a signature and the words GIUSEPPE ZANOTTI DESIGN, filed on February 27, 2012 in International Class 18 for leather and related goods and in International Class 25 for clothing, footwear and headgear.
The Panel notes in passing that the Complainant has claimed as registrations a number of Community Trade Mark applications which are in fact shown on the register as opposed.
The domain name was registered on May 4, 2013.
The domain name was registered on July 24, 2013.
The domain name was registered on June 12, 2013.
The domain name was registered on September 12, 2013.
The domain name was registered on August 30, 2013.
At the date of the Center’s formal compliance review, July 7, 2014, the domain names , and resolved to websites which bore the name “Giuseppe Zanotti” and a signature device similar to the Complainant’s device, in addition to photographs of, and links to, what appear to be the Complainant’s branded goods. The domain names and did not resolve to any active websites. 5. Consolidation of Proceedings
The Complaint relates to five domain names which the Complainant wishes to have dealt with in a single administrative proceeding. Paragraph 10(e) of the Rules states that a Panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that in the case of complaints brought against more than one respondent, consolidation may be allowed where (i) the domain names or the websites to which they resolve are subject to common control; and (ii) the consolidation would be fair and equitable to all parties.
In its original Complaint as filed, the Complainant submitted that the proceedings should be consolidated on the sole ground that all five of the disputed domain names had been registered with the same registrar, GoD, LLC. In the view of the Panel this ground was clearly insufficient to establish common control. In its First and Second Amended Complaints, however, the Complainant included additional submissions. These submissions, and the Panel’s conclusions upon each of them, may be summarized as below.
(1) All of the domain names have been used for the purpose of websites which “clone” the Complainant’s business, incorporate its trademark and include the Complainant’s footwear and images of its products.
In the view of the Panel, while these elements may well be common to websites which seek to imply an association with the Complainant and its goods, they do not of themselves establish that all such websites are in common control.
(2) It is clear that the domain names and are in common control because the registrant contact information is the same for both.
The Panel accepts the Complainant’s submission in this regard. However, this finding does not establish common control between those two domain names and the other three domain names in issue.
(3) The disputed domain names and appear to be in common control because the websites to which they resolve are similar in appearance (the Complainant exhibits print-outs of relevant web pages dated June 17, 2014).
The Panel accepts the Complainant’s submission and agrees that the similarities between the two websites in question are sufficient to establish, on the balance of probabilities, that those domain names are in common control. However, this finding does not establish common control between those two domain names and the other three domain names in issue.
(4) The domain names and appear to be in common control because the websites to which they resolve are similar in appearance (the Complainant exhibits print-outs of relevant web pages).
Again, the Panel accepts the Complainant’s submission and agrees that the similarities between the two websites in question are sufficient to establish, on the balance of probabilities, that those domain names are in common control. Again, however, this finding does not establish common control between those two domain names and the other three domain names in issue.
(5) In addition to being registered with the same registrar, GoD, LLC, all five of the domain names use the same top level domain, “.com”.
The Panel regards this matter as having no material relevance to the question of common control.
(6) All five of the domain names were registered within a period of just over four months, between May 4 and September 12, 2013.
While the Panel accepts that this may have some degree of significance, it does not consider that this factor is sufficient of itself, or in conjunction with the other factors relied on by the Complainant, to establish common control between the five domain names.
The Panel has considered the disputed domain names in the order in which they appear in the Complaint, namely:
Starting with the domain name , on the basis of the Panel’s conclusions as set out above, the Panel determines that it is appropriate to consolidate the dispute in respect of the domain names and within this proceeding. With regard to the remaining three domain names, however, the Complainant has failed to establish to the satisfaction of the Panel, on the balance of probabilities, that they are under common control with the two domain names referred to above. Accordingly the Panel will give no further consideration to those three domain names within this proceeding and the Complainant must file fresh proceedings, should it wish to do so, in respect of those domain names. 6. Parties’ Contentions A. Complainant
The Complainant states that it was established in 1990 and has used for many years the mark GIUSEPPE ZANOTTI DESIGN, which derives from an Italian fashion designer, Giuseppe Zanotti. The Complainant submits that its brand GIUSEPPE ZANOTTI DESIGN is one of the world’s best-known brands of footwear. The Complainant submits evidence of a commercial presence in over 90 locations throughout the world and states that its turnover in 2013 was EUR 115 million.
The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant relies on its US and Community trademark rights in the mark GIUSEPPE ZANOTTI DESIGN and submits, in addition, evidence of similar registrations in Mexico and in Korea. With regard to both the disputed domain names and , the Complainant contends that the “giuseppezanotti” part of the domain names is identical to its trademark, ignoring the term “design”. The Complainant submits that the addition of the terms “outlet” and “eshop” respectively do not distinguish the disputed domain names from the Complainant’s trademark and in fact give the impression that they are extensions of the Complainant’s own activities.
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy).
The Complainant states that the Respondents have no relevant trademark rights and that the Complainant never licensed or authorized the Respondents to use its GIUSEPPE ZANOTTI DESIGN trademark for the purposes of the disputed domain names. The Complainant further contends that the Respondents have no prior rights in the trademark and GIUSEPPE ZANOTTI DESIGN and that they are not known by that trademark: an Internet search confirms that the term refers only to the Complainant and its products. Nor are the Respondents making use of the disputed domain names in connection with any bona fide offering of goods or services: the Respondents are using the disputed domain names to attract Internet users to their websites by creating a likelihood of confusion with the Complainant’s trademark, which cannot be a bona fide use. Nor can this be legitimate noncommercial or fair use of the disputed domain names.
The Complainant submits that the disputed domain names have been registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant submits that its trademark GIUSEPPE ZANOTTI DESIGN was well-known throughout the world at the date of registration of the disputed domain names and that it is inconceivable that the Respondents were unaware of that trademark when it registered the disputed domain names.
Furthermore, the Respondents are using the domain names intentionally to attract Internet users to their websites by creating a likelihood of confusion with the Complainant’s GIUSEPPE ZANOTTI DESIGN trademark. The Complainant asserts that the Respondents’ websites are confusingly similar to the Complainant’s own website and that they reproduce not only the Complainant’s trademark but also the Complainant’s own promotional photographs, including pictures of celebrities and of the Complainant’s products. The Complainant submits that Internet users would find the Respondents’ websites by entering the name of the designer, and that once having done so, they would be highly likely to believe that the websites were in some manner affiliated with the Complainant.
The Complainant also asserts that the product pricing found on the Respondents’ websites is highly discounted, which leads to the suspicion that the goods being offered are not genuine. However, the Complainant offers no further evidence in this regard.
The Complainant seeks the transfer of the disputed domain names. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 7. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Even in a case such as this where the Respondents have failed to file a Response, the Complainant must still establish that all three of the above elements are present. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of trademark registrations in various territories for marks including the words GIUSEPPE ZANOTTI DESIGN and a signature device. The Panel accepts that in the case of both the disputed domain names the term “giuseppezanotti” is the dominant and distinctive part of the domain name and that the descriptive terms “outlet” and “eshop”, which are suggestive of sales activities, do not serve to distinguish the disputed domain names from the Complainant’s trademark. Nor is it significant that the disputed domain names omit the term “design”. Therefore, the Complainant has established that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights and the first element of the test set out under paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant has asserted that the Respondents have not previously been known by the disputed domain names and had no prior interest in the Complainant’s GIUSEPPE ZANOTTI DESIGN mark. It also states that it did not authorize the Respondents to use its mark for the purpose of the disputed domain names. The Complainant further submits that the Respondents are not using the disputed domain names in connection with any bona fide offer of goods or services, nor have they made any legitimate non-commercial use of the disputed domain names. On the contrary, they have used the disputed domain names for the purposes of websites which are likely to confuse Internet users into believing that they are affiliated with the Complainant.
While the Complainant’s contentions give rise to a prima facie case that the Respondents have no rights or legitimate interests in respect of the disputed domain names, it was open to the Respondents to respond to this administrative proceeding, to dispute the Complainant’s contentions if appropriate and to provide evidence of any rights or legitimate interests in the disputed domain names. However, the Respondents have failed to respond and there is no other evidence available to the Panel that suggests that the Respondents have any relevant rights or legitimate interests in the disputed domain names.
In the circumstances, the Panel concludes that the Respondents have no rights or legitimate interests in respect of the disputed domain names and the second limb of the test under paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submissions that the Respondents have used the Domain Names for the purposes of websites which use substantial elements of the Complainant’s trademark, including the name “Giuseppe Zanotti” and the Complainant’s signature device. The Panel also accepts the Complainant’s submission that the Respondents have used promotional images taken from the Complainant’s own website, including photographs of celebrities and of the Complainant’s products.
In the circumstances, the Panel infers that the Respondents both registered and have used the disputed domain names in the knowledge of the Complainant’s GIUSEPPE ZANOTTI DESIGN trademark and with the intention of unfairly benefiting from the Complainant’s goodwill in that mark. In particular, the Panel finds that by using the disputed domain names, the Respondents have intentionally attempted to attract for commercial gain Internet users to their websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites or of products on those websites (paragraph 4(b)(iv) of the Policy).
The Panel also notes that the Center’s attempted communications with the Respondents by email, fax and courier delivery have failed or have been returned as undeliverable.
The Panel concludes in the circumstances that the Domain Names have been registered and are being used in bad faith. The third limb of the test under paragraph 4(a) of the policy is therefore satisfied. 8. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraphs 10(e) and 15 of the Rules, the Panel orders as follows:
(1) that the complaints concerning the disputed domain names and be consolidated within the present proceeding;
(2) that the complaints concerning the disputed domain names , and be excluded from the present proceeding; and
(3) that the disputed domain names and be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: August 4, 2014
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