The Complainant is Calzaturificio Casadei S.p.A. of San Mauro Pascoli, Forlì-Cesena, Italy, represented by Studio Crea Avvocati Associati, Italy.
The Respondent is Parada Oscar of Phoenix, WG, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On February 26, 2015, 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.
On March 2, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 3, 2015, the Complainant submitted a formal request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 proceeding commenced on March 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 1, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on April 20, 2015. 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 well-known Italian company based in San Mauro Pascoli, engaged in the field of the design, production and marketing of footwear. The Complainant's business started in 1958, from a small boutique created by Quinto and Flora Casadei. The first exports of its products began in 1967 to the United States of America. In the 1970s, the Complainant (and/or its predecessors) undertook advertising campaigns in the pages of top fashion and trade magazines, commenced exports to Japan, and opened a boutique in Brussels. In 1978, a showroom was opened along Madison Avenue in New York City. The expansion of the business to the Middle East took place in the 1980s.
Today, the Complainant owns 16 flagship stores across a number of countries including in the Russian Federation and China. The global awareness of the Complainant's CASADEI trade mark is elevated all the more with international celebrities having been photographed on the red carpet or in other similar public events wearing CASADEI footwear. The CASADEI trade mark has become a symbol of high-quality Italian luxury fashion across the world.
The trade mark CASADEI is universally recognized and associated with the Complainant. Since 1979, "Casadei" has been the corporate name under which the Complainant's business in the footwear fashion design operates.
The Complainant's domain name was registered on February, 20 2006. The Complainant is also the owner of several other domain names containing the trade mark CASADEI including (registered on October, 21 2010). The domain name is used by the Complainant to sell and market its products online to consumers in the U.S.
The Complainant holds numerous national, European Community and International trade mark registrations comprising or containing the word CASADEI.
The disputed domain names were all registered on October 7, 2014.
The Complainant tried to contact the Respondent by sending three letters of demand, viz. on November 6, 2014 (by email), November 17, 2014 (by email), and November 25, 2014 (by registered mail). The Complainant did not receive any reply. The registered letter sent on November 25, 2014 could not be delivered as the Respondent's address contained in the WhoIs was incorrect. 5. Parties' Contentions A. Complainant
1. The disputed domain names are confusingly similar to the Complainant's CASADEI trade mark as they incorporate the Complainant's trade mark. The addition of the suffixes in the respective disputed domain names, i.e. "outlet", "scarpe" (Italian for "shoes"), "it" (universally recognized to signify Italy) and "-shoe" does not have any impact on the overall impression of the dominant portion of the disputed domain names and therefore does not avoid the confusing similarity with the Complainant's trade mark. Anyone who sees the disputed domain names is likely to think that they are related to the business of the Complainant.
2. The Respondent has no rights or legitimate interest in the disputed domain names. The Respondent
is not, and never has been, a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the mark CASADEI. Moreover, there is no affiliation between the Complainant and the Respondent, and the Respondent is, moreover, not commonly known by the disputed domain names. The Respondent does not use the disputed domain names for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of it. On the contrary, the Respondent uses the disputed domain names to sell counterfeit CASADEI products. The counterfeit nature of the Respondent's products was verified by the Complainant through its own investigations and checks.
3. The disputed domain names were registered and are being used in bad faith by the Respondent. This is supported by the following:
(i) The Respondent appears from the WhoIs information to be based in the United States. He must have been aware of the Complainant and of its rights in the CASADEI trade mark when he registered the disputed domain names.
(ii) The false address and contact information given by the Respondent in the WhoIs records.
(iii) The Respondent registered more than one domain name incorporating the Complainant's trade mark. His aim is to misleadingly divert consumers to the contested websites by using the Complainant's trade mark in the disputed domain names in combination with general suffixes such as "online", "it", "scarpe" and "-shoe". The Respondent's intention has been to exploit in bad faith the Complainant's trade mark in order to sell counterfeit CASADEI products.
(iv) The commercial gain is also confirmed by the correspondence between an "artificial client" (in fact the Complainant's authorized representative) and a member of the sales team of "". On January 9, 2015, after a failed purchase attempt from the Respondent's website, the sales team member wrote an email in response, asking the buyer to select another item "because of the popularity of the products, and the limited quantity". The buyer responded to the email received and chose another item, after which the buyer received on January 29, 2015 another email from the sales team of "", this time from a different email address. The email read: "Dear customer, I am so sorry to tell you that because of the computer system, I didn't see some your information before so we didn't give you the reply in time. […] Would you mind choosing another item? …". The buyer replied to this email on February 3 2015, choosing another item again. This time, no reply was received by the buyer. This exchange of correspondence and the fact that the payment of EUROS 131.60 was paid but nothing was delivered to the buyer show clear bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
The Complaint was filed in English but the language of the registration agreement is Chinese.
Paragraph 11(a) of the Rules stipulates that: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
The Complainant requested that English be the language of the proceedings for the following reasons:
(i) The Respondent's websites to which the disputed domain names resolve are in English and the payment currency is US dollars. These facts show that the Respondent has proficiency and is able to communicate in English.
(ii) The Respondent is located in the U.S.
(iii) The Complainant would have to translate all the documents of the proceeding into Chinese which would result in the Complainant having to incur additional costs and delay the proceeding.
(iv) The Respondent appears to be capable of corresponding in English.
The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay in the proceeding. This position is consistent with earlier UDRP panel decisions (see Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593.
In this case, the Panel concludes that English should be the language of the proceedings. It is quite evident from the circumstances of this case that the Respondent has a more-than-basic understanding of the English language. The Panel therefore finds it appropriate to make its ruling in English. B. Identical or Confusingly Similar
The Complainant has shown it has trade mark rights in CASADEI. The word CASADEI has been incorporated in its entirety in and appears at the beginning of each of the disputed domain names. The question then is whether the generic words/abbreviation "online", "scarpe", "it" and "-shoe" are sufficient to remove the confusing similarity with the CASADEI trade mark. The Panel does not think that they are. In fact, in the context of the Respondent's website and in view of the Complainant's business, product line and country of origin, the respective generic words and abbreviation add to the confusion with the Complainant's CASADEI trade mark.
The Panel therefore concludes that the first element of paragraph 4(a) of the Policy has been established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. It includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services; or
(2) being commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
For the purposes of paragraph 4(c) of the Policy, the Complainant is required to establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.). Once the Complainant has presented a prima facie case, the burden shifts to the Respondent to submit evidence to prove he has rights or legitimate interests in the disputed domain names.
The Panel finds that the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent is commonly known by the disputed domain names nor is there evidence of a legitimate noncommercial or fair use of the disputed domain names in connection with a bona fide offering of goods or services. The choice of the generic terms in the disputed domain names reflects a clear intention by the Respondent to mislead and divert consumers for commercial gain. The goods offered by the Respondent also appear to be counterfeit products, from which the Panel draws an adverse inference. Such use of the disputed domain names does not constitute a bona fide offering of goods and is likely to tarnish the Complainant's CASADEI trade mark.
The Respondent has failed or chosen not to file a response in this proceeding to demonstrate his rights or legitimate interests in the disputed domain names. Neither did he respond to the Complainant's letters of demand by email.
In the circumstances and in the absence of contrary evidence, the Panel finds that the Complainant has established the second element of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
The Panel also finds from what has been submitted by the Complainant, that the disputed domain names were registered and are being used in bad faith. The circumstances fall within the example of what would constitute evidence of bad faith registration and use set out in paragraph 4(b)(iv) of the Policy:
"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 primary objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trade mark of another.
In the circumstances, the Panel finds that the Complainant has established the third element 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 names , , and be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: April 22, 2015
Full & Egal Universal Law Academy