The Complainant is Salvatore Ferragamo S.p.A of Firenze, Italy, represented by Studio Legale SIB, Italy.
The Respondent is Zhou Yifan of Hong Kong, China. 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 August 7, 2015. On August 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 8, 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 proceedings commenced on August 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2015.
The Center appointed David Stone as the sole panelist in this matter on October 5, 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 active in the business of manufacturing, marketing and selling fine shoes, handbags, wallets, luggage, belts, apparel, fragrances, gift items and costume jewelry. The Complainant’s products can be found at retail stores located around the world, including in Hong Kong, China, where the Respondent is based.
The Complainant is the owner of the FERRAGAMO and SALVATORE FERRAGAMO trade marks globally, and has been using such marks since at least 1927 with respect to shoes and 1968 with respect to handbags. The Complainant owns more than 800 applications and registrations for FERRAGAMO and SALVATORE FERRAGAMO worldwide.
The disputed domain names and were both created on November 18, 2014. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s FERRAGAMO and SALVATORE FERRAGAMO trade marks. The disputed domain names incorporate the Complainant’s trade marks in their entirety with the addition of the suffix terms “discount” and “outlet” () and “sale” and “outlet” in combination with a hyphen (). The Complainant submits that the addition of these suffix terms and hyphen will not lessen the confusing similarity between the disputed domain names and the Complainant’s trade marks, or have any impact on the overall impression of the dominant part of the disputed domain names.
The Complainant contends that there is no evidence to suggest that the Respondent has been using FERRAGAMO or SALVATORE FERRAGAMO in any way that would give it rights or legitimate interests in the disputed domain names. The Complainant further contends that the Respondent is not in any way affiliated with the Complainant or authorised or licensed to use the FERRAGAMO or SALVATORE FERRAGAMO trade marks.
The Complainant submits that the FERRAGAMO and SALVATORE FERRAGAMO trade marks are well-known within the fashion industry as well as to the public, and that the Respondent’s use of the trade marks is for the purpose of passing himself off as the Complainant and confusing potential customers about the origin of the purchased items. The Complainant further submits that the Respondent registered the disputed domains to take unfair advantage of the reputation of the Complainant’s mark.
The Complainant asserts that the disputed domain names were registered and are being used in bad faith. The Complainant also asserts that the Respondent owns several domain names which include well-known third parties’ trade marks in the field of fashion.
The Complainant requests that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided evidence that it has prior registered rights in the marks FERRAGAMO and SALVATORE FERRAGAMO around the world, including in Hong Kong, China, where the Respondent is based. From the evidence supplied by the Complainant, the Panel finds that FERRAGAMO and SALVATORE FERRAGAMO are well-known trade marks, at least in relation to fashion and luxury goods. The panel in Salvatore Ferragamo S.p.A. v. Deng Lingtao, Ludwig Rhys,WIPO Case No. D2014-2251 made a similar finding.
The disputed domain names incorporate the Complainant’s trade marks in their entirety. The addition of the suffix terms “discount” and “outlet, and “sale” and “outlet” in combination with a hyphen, does not impact on the overall impression of the words “Ferragamo” and “Salvatore Ferragamo”.
Previous panels have held that adding common terms to a registered trade mark (as is the case here) and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark (see Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923; and Deutsche Telekom AG v. Gems N Pearls International Holding,WIPO Case No. D2005-0820).
Furthermore, several previous panels have held that the use of a hyphen in a domain name is insignificant and does little to avoid confusing similarity between the domain name and the mark (see Swarovski Aktiengesellschaft v. blue crystal,WIPO Case No. D2012-0630; and Swarovski Aktiengesellschaft v. pfd, I. Stewart Donald/ dd I. Stewart Donald/ pd, I. Stewart Donald/ ma, I. Stewart Donald,WIPO Case No. D2012-0969.
Accordingly the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Guidance regarding establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three circumstances are identified that would establish rights or legitimate interests:
(i) bona fide prior use;
(ii) common association with the domain name; and
(iii) legitimate noncommercial use.
The Complainant has made a prima facie case that none of these circumstances apply. The Respondent did not exercise his right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other argument supporting rights or legitimate interests.
The Panel finds no other basis for establishing rights or legitimate interests under the circumstances.
Consequently, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides guidance regarding establishing bad faith.
Four non-exhaustive circumstances are identified where the Respondent’s intention in registering domain names may be evidence of bad faith. These intentions may be summarized as follows:
(i) to sell the domain names to the rights-holder at a profit;
(ii) to prevent the rights-holder from registering domain names;
(iii) to disrupt the business of a competitor; and
(iv) to divert Internet traffic for commercial gain.
Given that the FERRAGAMO and SALVATORE FERRAGAMO trade marks are well-known, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s trade mark at the time the disputed domain names were registered. Previous panels have made a finding of bad faith where the complainant’s trade mark was shown to be well-known or in wide use at the time of registration of the disputed domain name (see SembCorp Industries Limited v. Hu HuanXin,WIPO Case No. D2001-1092; and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). The fact that the Respondent advertised goods purporting to be produced by the Complainant, and owns several domain names which include well-known third parties’ fashion and luxury brand trade marks supports the Panel’s findings in this respect.
The Respondent is not an authorised reseller or distributor of the Complainant’s products. Applying the comments of the panelist in Lego Juris A/S v. Probuilders,WIPO Case No. D2011-0226, the sale of the Complainant’s products by the Respondent under the banner of the Complainant’s logos and trade marks is clearly designed to imply a connection between the Respondent and the Complainant.
The Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s trade mark.
Accordingly the Panel finds that the Complainant has established the third element under paragraph 4(a)(iii) 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.
David Stone
Sole Panelist
Date: October 14, 2015
Full & Egal Universal Law Academy