Complainant is Lardini S.r.l. of Filottrano, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
Respondent is Andrea Soldano, Esamatic srl of Bergamo, Italy. 2. The Domain Names and Registrar
The disputed domain names and are registered with
AlpNames Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 8, 2016. On July 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 11, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on July 14, 2016.
On July 14, 2016, the Center received email communications from Respondent who appeared to be willing to explore settlement with Complainant. On the same day, the Center informed the Parties that if they would like to explore settlement options, Complainant should submit a request for suspension. Upon Complainant's request of July 15, 2016 and its extension request of August 10, 2016, the proceeding was suspended until September 13, 2016. On September 12, 2016, Complainant requested to reinstitute the proceeding.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2016. No further communication was received from Respondent after notification of the Complaint. On October 4, 2016, the Center informed the Parties that it would proceed with panel appointment shortly.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 7, 2016. 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
Complainant is a leading Italian company manufacturing, marketing and selling articles of clothing and accessories since 1978.
Complainant owns, inter alia, the following trademark registrations for LARDINI:
- Italian trademark registration No. 0001480716, registration date March 5, 2012, filed on February 27, 2012, first filed on July 26, 2002, covering, inter alia, clothing, footwear and headgear in class 25;
- European Union trademark registration No. 002155745, filed on March 28, 2001, registered on May 15, 2002, covering clothing, footwear and headgear in class 25;
- International registration No. 792148, registered on October 15, 2002, covering, inter alia, clothing, footwear and headgear in class 25 and designating China, as well as through subsequent designations of 2003, 2004 and 2015, Russian Federation, Romania, Republic of Korea and Mexico;
- International registration No. 1156718, registered on November 23, 2012, covering, inter alia, clothing, footwear and headgear in class 25 and designating the European Union, Japan, Republic of Korea, China and Russian Federation;
- Hong Kong, China registration No. 200112299, dating back to April 6, 2001, covering clothing, footwear and headgear in class 25;
- Taiwan Province of China registration No. 00990861, dating back to April 10, 2001, covering men's clothing, suits, jackets, trousers, coats in class 25.
Since 1998, Complainant owns the domain name , at which Complainant operates a website promoting its Lardini products.
According to the Registrar's WhoIs database, the records for the disputed domain names were created on November 28, 2015. 5. Parties' Contentions A. Complainant
Complainant contends as follows:
The disputed domain names are confusingly similar to Complainant's trade name and trademark LARDINI, as well as with its official domain name. The components "cappotti" and "cappotti uomo" in the disputed domain names are deprived of any distinctive character, being totally generic and descriptive in the field of clothing and fashion accessories. "Cappotti" means "coats" and "cappotti uomo" means "man coats". Coats constitute a good part of Complainant's production.
Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent is not affiliated in any way with Complainant. Respondent does not own any trademark applications or registrations for "Cappottilardini" or "Cappottiuomolardini", according to a search of trademark databases on the Saegis platform using the following criteria: (i) trademarks containing "Lardini" or "Cappotti" plus (ii) owner name: "Andrea Soldano" or "Esamatic".
Complainant has not authorized, licensed, or given its consent to Respondent to register or use the disputed domain names. Respondent is not commonly known by the disputed domain names, does not trade under the names "Cappottilardini" or "Cappottiuomolardini" and does not make any legitimate commercial use thereof. Respondent did not demonstrate any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Actually, the disputed domain names merely resolve to a page requesting email/password credentials. This is clearly a case of phishing aiming to obtain confidential information from Complainant's clients believing that Complainant endorses the disputed domain names.
In addition, the company Esamatic srl indicated in the registrant field in the WhoIs database enclosed as Annex 1 (of which the Respondent is owner) seems to be active in the information technology field. It thus has nothing to do with the production or sale of coats.
The disputed domain nameswere registered and are being used in bad faith. It is implausible that Respondent was unaware of Complainant when it registered the disputed domain names. In fact, Complainant's trade name and trademark LARDINI are well known in many countries and especially in Italy where both Complainant and Respondent are located. The company Esamatic srl is located in Italy as well. In light of the reputation of Complainant's trade name and trademark, Respondent's reproduction of the trademark LARDINI in its entirety in the disputed domain names in combination with "cappotti" and "cappottiuomo", which indicate one of the kind of goods sold by Complainant, clearly proves that Respondent was aware of the existence of Complainant's trademark.
Use in bad faith is proven by the fact that Respondent is engaged in a phishing scheme and clearly aims at stealing valuable information by using Internet users' email addresses and passwords. See OLX, Inc. v. J D Mason Singh,WIPO Case No. D2014-1037 ("There is no better evidence of bad faith than a case like this where a fraudulent phishing scheme is set up with the help of a domain name that contains the trademark of a company the customers of which are being misled and deceived into believing they are dealing with the owner of the trademark"). B. Respondent
On July 14, 2016, Respondent sent an email in English to Complainant and the Center, stating, "can you explain me what is going on?" On the same day, Respondent sent another email in Italian to Complainant and the Center, stating, "Dear […] D'Amore, as already explained by phone, I am available as of now to speed up the procedure. I take the opportunity to express my sincere greetings. Andrea Soldano". During the suspension period, Respondent sent another email in English on August 10, 2016 to the Registrar, Complainant and the Center stating "why dont you send them the authorization code. So they can simpy transfer the property of these domains".
Beside these communications, Respondent has not submitted any contention or evidence in the proceeding. 6. Discussion and Finding A. Identical or Confusingly Similar
By submitting printouts from the corresponding databases, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the LARDINI trademark. See Section 4. above.
The Panel notes that in the disputed domain names Complainant's LARDINI trademark is incorporated in its entirety, just adding the generic terms "cappotti" (Italian for "coats") and "cappotti uomo" (Italian for "men's coats"), and the generic Top-Level Domain ("gTLD") ".top". The Panel believes that the addition of these generic terms to the LARDINI mark rather reinforces the impression of association of the disputed domain names with the Complainant and its LARDINI mark and products, since Complainant markets, inter alia, coats and men's coats under the LARDINI mark.
The Panel concludes that the disputed domain names are confusingly similar to Complainant's mark. Thus, the first requirement of the Policy is met. B. Rights or Legitimate Interests
Complainant contends that Respondent is not affiliated in any way with Complainant, that Respondent does not own any trademark applications or registrations for "Cappottilardini" or "Cappottiuomolardini", and that it has not authorized, licensed or allowed Respondent to register or use the disputed domain names. Complainant also contends that Respondent is not commonly known by the disputed domain names, that it does not trade under the names "Cappottilardini" or "Cappottiuomolardini" and that it does not make any legitimate commercial use thereof. Complainant adds that Respondent did not demonstrate any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. In fact, the disputed domain names resolve to a page requesting email/password credentials. Complainant further says that this is a case of phishing aiming to obtain confidential information from Complainant's clients believing that Complainant endorses the disputed domain names. Lastly, Complainant states that Esamatic srl is owned by Respondent, and seems to be active in the information technology field, thus having nothing to do with the production or sale of coats.
In the opinion of the Panel, the existing evidence supports these contentions of Complainant. According to the printouts from the websites at the disputed domain names, taken on July 4, 2016, the only content of the websites at the disputed domain names is a page merely stating, "Acceso...E-mail...Password...Recuperar contraseña...(Spanish for "Recover password"). The Panel agrees with Complainant that this text appears to be a phishing attempt to gather valuable data, such as email addresses and passwords, from Internet users presumably looking for Complainant's Lardini coats and men's coats. Although this alone might not be sufficient to conclude that, as contended by Complainant, Respondent is in fact involved in a phishing scam, the Panel infers that Respondent most likely attempted to deceive inadvertent Internet users, by inducing them to believe that they were connected with a legitimate Complainant's website, and thus to provide contact information. In any case, the Panel believes that this only use of the disputed domain names by Respondent is neither a bona fide use under Policy, paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, pursuant to Policy, paragraph 4(c)(iii).
Further, according to the WhoIs records for the disputed domain names, Respondent's name appears to be "Andrea Soldano" with an organization as "Esamatic srl", and there is no contention or evidence that Respondent is known, commonly or otherwise, by any of the disputed domain names. As a consequence, the circumstance of Policy, paragraph 4(c)(ii) also is inapplicable to this case.
In the Panel's view, this is sufficient for Complainant to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names.
For its part, in its communications of July 14, 2016 and August 10, 2016 in this proceeding, Respondent failed to contest any of Complainant's contentions, or to provide any argument or evidence in its own favor. Moreover, on August 10, 2016, Respondent sent an email to the Registrar, Complainant and the Center stating "why dont you send them the authorization code. So they can simpy transfer the property of these domains". The Panel believes that although this statement is not an unconditional consent to transfer, at least shows Respondent's lack of interest in contesting Complainant's contentions, which suggests that Respondent does not have any rights or legitimate interests in the disputed domain names.
In view of the above, the Panel cannot but conclude that Complainant has made out its case that Respondent lacks rights or legitimate interests in the disputed domain names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 ("...[A] complainant is required to make 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 to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP ...)"
The second requirement of the Policy is thus met. C. Registered and Used in Bad Faith
Complainant has shown that it has registered its LARDINI trademark several years before the disputed domain names were registered by Respondent. See Section 4. above. Also, by submitting printouts of independent press articles, Complainant has evidenced that its LARDINI marks and products, including coats and men's coats, and are well known in the field of men's fashion. The fact that Complainant operates stores in several countries, also contributes to the conclusion that Complainant's products and marks enjoy considerable recognition by consumers in Italy and in various other countries. Also, the addition in the disputed domain names of the Italian terms for "coats" and "men's coats", i.e., products marketed by Complainant, to Complainant's mark, also shows that Respondent, in all likelihood, knew of, and targeted, Complainant and its LARDINI trademark at the time of registering the disputed domain names. In the circumstances of this case, this is evidence of registration in bad faith.
As seen above, in its only use of the disputed domain names, Respondent's attempted to gather valuable personal data from Internet users presumably looking for Complainant. Aside from showing Respondent's lack of rights or legitimate interests in the disputed domain names (see Section 6.B. above), in the Panel's view this shows that Respondent used the disputed domain names intentionally to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites, which, according to Policy, paragraph 4(b)(iv), is a circumstance of bad faith registration and use.
The third requirement of the Policy is also 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 names, and , be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: October 20, 2016
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