The Complainant is Salvatore Ferragamo S.p.A of Florence, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Jacie Leo of Odessa, Texas, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2015. On June 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 4, 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.
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 June 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2015.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on July 13, 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 an Italian company that has been using the trademark FERRAGAMO as early as 1927, with respect to shoes, and 1968, with respect to handbags.
For decades, the Complainant also manufactures, markets, and sells a variety of products under the trademark FERRAGAMO, including wallets, luggage, belts, apparel, fragrances, gift items and costume jewelry.
The Complainant owns numerous trademark registrations for FERRAGAMO in Italy (since 1937), as well as in many other countries, including the United States (since 1973).
The Complainant also owns multiple domain names comprising the FERRAGAMO trademark, including , and , since 1996.
The Respondent registered the disputed domain names and respectively on November 4, 2014 and February 6, 2015.
The Panel accessed the disputed domain names on July 22, 2015, and found that there were no active pages linked to the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
- The Complainant’s trademark FERRAGAMO is well-known within the fashion industry and a symbol of quality on shoes, handbags and other products. The trademark FERRAGAMO is unique in the sense that there is no identical or similar marks or names which are registered or in use by third parties.
- The disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. The incorporation of the Complainant’s well-known trademark is sufficient to find confusing similarity in the present case. It is well established that in UDRP cases where the distinct and prominent element of the disputed domain name is the complainant’s trademark and the only variation is the addition of a merely generic, descriptive or a geographical wording, such variation would normally be insufficient in itself to avoid a finding of confusing similarity. The inclusion of the terms “usa” and “cheap” in the disputed domain names may reinforce the association with the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated in any way with the Complainant and, to the best of the Complainant’s knowledge, does not own any trademark application or registration for “” or “” or any similar marks. The Complainant has not licensed or otherwise authorized the Respondent to use the trademark FERRAGAMO. The website which used to resolve to the disputed domain name appeared to be used for commercial purpose and, to the best of the Complainant’s knowledge, the goods offered for sale there were counterfeit.
- The disputed domain names were registered and are being used in bad faith. The Respondent certainly had knowledge of the Complainant’s trademark when he registered and started using the disputed domain names. Various elements exclusive to the Complainant have been directly reproduced in the website previously published at , where the Respondent also used to offer for sale counterfeit products. The Respondent registered the disputed domain names to take unfair advantage of the reputation of the Complainant’s mark. The Respondent’s bad faith is also proven by the fact that he owns several other domain names composed of well-known trademarks such as , and . Finally, the present passive holding of the disputed domain names completes the characterization of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel has no doubt that “ferragamo” is a term directly connected with the Complainant’s activities in the fashion businesses worldwide.
Annex 11 to the Complaint shows trademark registrations for FERRAGAMO obtained by the Complainant dating as early as 1937.
The trademark FERRAGAMO is wholly encompassed within the disputed domain names.
The disputed domain names differ from the Complainant’s trademark basically by the addition of the expressions “cheap-” or “usa” before the word “ferragamo”, as well as the generic Top-Level Domain (“gTLD”) denominator “.com”.
Previous UDRP decisions have demonstrated that descriptive or geographical additions to a trademark in a domain name does not avoid confusing similarity with the trademark. This has been held in many UDRP cases (see e.g., Inter-IKEA Systems B. V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use 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; 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain names.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain names, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain names were registered by the Respondent (respectively in November, 2014 and February, 2015) the trademark FERRAGAMO was already evidently well-known worldwide and directly connected to the Complainant’s activities in the fashion business.
The disputed domain names encompass the trademark FERRAGAMO, together with the descriptive term “cheap” or the geographical reference “usa”.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain names – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expressions “cheap-ferragamo” and “usaferragamo” could be mere coincidences.
Actually, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) potentially obtains revenue from this practice; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant.
It is true that presently the disputed domain names do not resolve to any active webpage.
However, UDRP panels have frequently found that the apparent lack of so-called active use of the domain names (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Polaroid Corporation v. Jay Strommen,WIPO Case No. D2005-1005.
The passive and non-collaborative posture of the Respondent, (a) not presently using the disputed domain names, (b) not indicating any intention to use it, and (c) not at least providing justifications for the use of a third party well-known trademark together with a descriptive term that indicates one of its main products, or a geographical reference to one of the Complainant’s main markets, certainly cannot be used in benefit of the Respondent in this Panel’s opinion.
Such circumstances, including (d) the lack of any plausible interpretation for the adoption of the expressions “cheap-ferragamo” and “usaferragamo” by the Respondent, (e) the Respondent’s demonstrative use of the disputed domain name without disclaimer and allegedly in connection with the sale of counterfeit goods, as well as (f) the Respondent’s pattern of conduct of registering domain names composed by well-known trademarks are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith, and the Complainant has also satisfied the third element 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.
Rodrigo Azevedo
Sole Panelist
Date: July 27, 2015
Full & Egal Universal Law Academy