The Complainant is Salvatore Ferragamo S.p.A. of Firenze, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Wei Huan of Baiyin, Ningxia, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2014. On July 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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”).
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 August 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2014.
The Center appointed Mihaela Maravela as the sole panelist in this matter on September 8, 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 an Italian corporation active in the business of manufacturing, marketing and selling shoes, handbags and other articles. The Complainant has been using the trademark FERRAGAMO since at least 1927 in relation to shoes and 1968 with respect to handbags. The Complainant manufactures, markets and sells a wide variety of other types of products, including wallets, luggage, apparel, fragrances, gift items and costume jewelry. The Complainant’s products can be found at retail stores located in Italy, United States of America, United Kingdom of Great Britain and Northern Ireland, France, Germany, Canada, China, Hong Kong, China, Japan, Korea, Taiwan Province of China, and other countries. During the last years, the Complainant spent worldwide an average of EUR 40 million per year for advertising and promoting its products, including products bearing trademarks centered on FERRAGAMO.
The Complainant also developed its presence on the Internet and is the owner of numerous domain names consisting of the trademark FERRAGAMO. For example: , , , , and many others.
The disputed domain name was registered on May 7, 2014. The website at the disputed domain name is in Japanese and purports to sell Ferragamo products at substantial discounts. The address for the registrant of the disputed domain name is given as being in Ningxia, China.
The Complainant requests that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is the owner of various trademarks registered internationally, at community or local level and having relevance for the case at hand, and that the disputed domain name is confusingly similar to the Complainant’s FERRAGAMO trademark. As such, the “jpshop” suffix to the disputed domain name describes a service that the Complainant offers and location where the Complainant has established a number of stores; in addition, common words in the domain names should be eliminated for purposes of comparison.
Moreover, the Complainant contends that the Respondent is not affiliated in any way with the Complainant and, to the best of its knowledge, does not own any trademark applications or registrations for FERRAGAMO or any other mark comprising this sign in connection with any goods or services. In addition, the Complainant contends that it has not licensed or otherwise authorized the Respondent to use its FERRAGAMO trademark, or to apply for any domain name incorporating such mark. The Respondent is not commonly known by the disputed domain name and does not make any bona fide use or trade under the disputed domain name . Moreover, the Complainant contends that, to the best of its knowledge, the goods offered for sale on Respondent’s website at the disputed domain name are counterfeit.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant argues in this regard that, to the best of its knowledge, the Respondent offers for sale on the website to which the disputed domain name resolves counterfeit products bearing the Complainant’s trademarks with a clear intent for commercial gain. The Respondent’s bad faith is confirmed by the unauthorized use of the Complainant’s official advertising images with the intention to appear as the trademark owner, confusing the potential customers of the origin of the purchased goods. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notification of Proceedings to Respondent
Fundamental due process requirements must be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules establish procedures intended to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
Based on the methods employed to provide the Respondent with notice of the Complaint and the Respondent’s obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to submit a response is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814.
In view of the Respondent’s default in providing a response to the allegations of the Complainant, the Panel may decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)). Pursuant to paragraph 14(b) of the Rules, the Panel will draw such inferences from the Respondent’s default as it considers appropriate and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (Rules, paragraph 15(a)).
In order that the remedy requested in the Complaint is granted, paragraph 4(a) of the Policy requires that the Complainant prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of FERRAGAMO registered trademarks, including inter alia:
- the trademark FERRAGAMO registered at community level on April 20, 1998 under number 103259 for the classes 3, 6, 9, 14, 16, 18, 24, 25, 26, 28, 33, 35, 42 of goods and services,
- the trademark FERRAGAMO registered in Italy on November 27, 2009 under number 1232276 for the class 25 of goods and services (the initial deposit was dated September 25, 1937 and was registered under number 0000056351),
- the trademark FERRAGAMMO registered at international level on March 23, 1973 under number 397649 for the classes 3, 14, 18, 25 of goods and services,
- the trademark FERRAGAMMO registered in Japan on September 30, 1982 (and renewed subsequently) under number 1542300 for the classes 6, 14, 18, 25 and 26 of goods and services.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
The addition of the generic Top-Level Domain (“gTLD”) “.info” is without legal significance from the standpoint of comparing the disputed domain name to FERRAGAMO. Use of a gTLD is required of domain name registrants, “.info” is one of only several such gTLDs. See also Ticketmaster Corporation v. DiscoverNet, Inc.,WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk,WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
Apart from the gTLD, the disputed domain name consists of the Complainant’s trademark FERRAGAMO and the geographical term “jp” (initials for Japan) in combination with the generic term “shop”: Both terms are of a descriptive nature only and the distinctive element of the disputed domain name is obviously the term “ferragamo”.
When a disputed domain name incorporates, as here, the entirety of a complainant’s trademark the addition of common terms does not serve to distinguish adequately the domain name from the mark. See also for a similar finding Salvatore Ferragamo S.p.A v. Ying Chou,WIPO Case No. D2013-2034 (concerning inter alia the domain name ); Salvatore Ferragamo S.p.A. v. Haonan Hong,WIPO Case No. D2013-2040 (concerning the domain name ); Salvatore Ferragamo S.p.A. v. Brian E. Nielsen,WIPO Case No. D2014-1123 (concerning inter alia the domain names , , , ).
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By not submitting a response, the Respondent has failed to overturn such prima facie case.
Absent any response or defence by the Respondent, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given to the Respondent to use the trademark FERRAGAMO (see Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055 on absence of license or permission excludes bona fide or legitimate use).
The Respondent’s use of the disputed domain name does not constitute a legitimate noncommercial or fair use within the view of paragraph 4(c)(iii) of the Policy because the Respondent is apparently making a profit, or at least sought to make it, by deceptively attracting Internet users to a supposedly FERRAGAMO online shop.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting, prima facie, evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris,WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 the said website location or of a product or service on that website location.”
As noted above, the trademark FERRAGAMO is registered long before the disputed domain name and appears to have been extensively used worldwide. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Registration in bad faith can be inferred under such circumstances.
The Panel notes and accepts the Complainant’s unrebutted contention that the Respondent offers for sale on its website at “www.” unauthorized items bearing the Complainant’s FERRAGAMO trademark, thereby taking unfair advantage of the reputation of the Complainant’s mark, and uses the Complainant’s official advertising images with the intention to create confusion regarding the Complainant’s affiliation, sponsorship or endorsement of the Respondent’s website and the products offered on that website. See for a similar finding Salvatore Ferragamo S.p.A. v. Haonan Hong,WIPO Case No. D2013-2040.
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The third requirement of said Policy has been met. 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.
Mihaela Maravela
Sole Panelist
Date: September 22, 2014
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