The Complainant is Carla Sozzani Editore S.R.L. of Milan, Italy, represented by Kilpatrick Townsend & Stockton LLP, United States of America (“United States”).
The Respondent is Michael D. Darr of Jackson, Mississippi, United States. 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 June 27, 2017. On June 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the June 29, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2017.
The Center appointed Alistair Payne as the sole panelist in this matter on July 27, 2017. 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 has since 1990 operated a store in Milan, Italy under the name “10 Corso Como” from which it sells a wide array of products, including apparel, footwear, jewellery, fragrances, bags, houseware, kitchenware, books, paper products and food products. Since the time that it opened its first store in Milan, the Complainant has opened additional locations in Seoul, Shanghai, and Beijing and is soon to open its first store in the United States, with a location in the Fulton Market Building in New York City. The Complainant maintains an active website at the domain name , where it posts an assortment of information about the store, and through which it conducts a brisk e-commerce business, selling everything from books to jewellery to beauty products to housewares to bags and apparel
The Complainant owns a United States word mark registration for the trade mark 10 CORSO (under registration number 4466033) registered on January 14, 2014, as well as an international registration for this mark in various countries and jurisdictions worldwide. In addition, it owns various combined logo and work mark registrations for this mark as well as various international trade mark registrations for its 10 CORSO COMO mark. It first registered its 10 CORSO COMO logo mark in the United States on November 30, 1999, under registration number 2294866.
The disputed domain name was registered on February 6, 2017. The disputed domain name used to resolve to a website displaying fashion related articles and advertisements. The disputed domain name resolves to a website stating: “Notice: This domain has been redirected. If you are the registrant of this domain, please log into your account and confirm that your contact information is correct”. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights as set out above in the 10 CORSO mark and that the disputed domain name wholly incorporates and is identical to this mark. It further submits that the disputed domain name is confusingly similar to its 10 CORSO COMO mark.
The Complainant says that there is no relationship between it and the Respondent that gives rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating the Complainant’s marks. It submits that the Respondent has not been commonly known as 10 CORSO or done business under that name and that the Respondent’s use of the disputed domain name is not in connection with a bona fide attempt to offer goods and services to the public.
It is noted by the Complainant that the disputed domain name was registered initially on February 6, 2017, more than 26 years after the Complainant opened its first store in Milan, Italy in 1990 and more than 17 years after the Complainant first registered its 10 CORSO COMO logo mark in the United States on November 30, 1999. Furthermore, says the Complainant, the disputed domain name was registered more than six years after the first use of the 10 CORSO mark in January 2011 for apparel in the United States, and more than three years after the registration on January 14, 2014, of the 10 CORSO trade mark in the United States. In these circumstances, the Complainant submits that the Respondent either had constructive notice of the Complainant’s rights or based on the degree of use and renown attaching to the Complainant’s mark should have known of its rights. Therefore, says the Complainant, based on its evidence of pre-existing use, the burden is on the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
The Complainant submits that the Complainant acquired rights from Capretta, LLC, the former owner of the 10 CORSO mark in 2016 and also acquired rights in the disputed domain name. The disputed domain name was transferred into the account of Complainant’s counsel, Kilpatrick Townsend but was inadvertently allowed to lapse on October 25, 2016. The Complaint asserts that the Respondent opportunistically registered the disputed domain name when it became available in early 2017.
The Complainant has submitted in evidence a printout of various pages displayed at the disputed domain name as of March 29, 2017. It suggests that the website associated with the disputed domain name is a sham and appears to have been populated with an array of random “fashion-themed” articles and cursory references to the former owner of the 10 CORSO mark, posted for the purpose of giving the disputed domain name a veneer of authenticity. Despite the Respondent’s efforts to create the air of authenticity, its “Terms of Use” page says the Complainant gives away the sham purposes of the site as the Respondent appears to have made an imperfect job of copying terms and conditions from the “Craigslist” website, as references to “CL” and “Craig’s” appear for no reason throughout the terms of use. In addition, the Complainant notes that its attempt to reach the Respondent via the email address posted on the site – “sales@” – resulted in an undeliverable “bounceback” email. It says that since May 2017 there has been no content at the website to which the disputed domain name resolves and that beginning on or around May 15, 2017, the website has contained the message: “Notice: This domain has been redirected. If you are the registrant of this domain, please log into your account and confirm that your contact information is correct.” This says the Complainant indicates that the disputed domain name has been and is being used passively and in view of the degree of renown attaching to the Complainant’s mark the Complainant submits that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair purpose.
The Complainant says that the Respondent has purposefully incorporated the well-known 10 CORSO mark and two-thirds of the even more well-known 10 CORSO COMO mark into the disputed domain name and that this was registered long after these marks became well-known to consumers and therefore amounts to registration in bad faith.
The Complainant alleges that the Respondent has provided false contact details which is indicative of his bad faith. The Complainant investigations in this regard are set out below:
- On March 31, 2017, April 4, 2017, and April 17, 2017, the Complainant’s investigator sent email inquiries to the email address listed in the WhoIs record, i.e., “@”. None of these inquiries prompted a response;
- On April 6, 2017, the Complainant’s investigator attempted to reach the Respondent by telephone at the telephone number listed in the WHOIS record. The investigator reached a recording advising her that the phone number was invalid;
- Through its research, the Complainant’s investigator was able to locate no information concerning a “Michael D. Darr” in Jackson, Mississippi, United States. Searches of county records in Hinds County, Mississippi, where Jackson is located, turned up nothing about Mr. Darr or the physical address listed in the WhoIs record;
- On April 26, 2017, the Complainant’s investigator lodged a complaint with Go Daddy, the disputed domain name’s registrar. GoDaddy advised the investigator that it would undertake efforts to contact the Respondent and that it would suspend the disputed domain name account if it failed to make contact with Respondent;
- On May 15, 2017, a check on the status of the disputed domain name revealed the message: “Notice: This domain has been redirected. If you are the registrant of this domain, please log into your account and confirm that your contact information is correct”. This strongly suggests to the Complainant that GoDaddy has suspended the disputed domain name account.
The Complainant further asserts that the Respondent opportunistically registered the disputed domain name shortly after the Complainant inadvertently allowed it to expire, which it says is of itself evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated as noted above that it owns registered rights in its 10 CORSO mark. In particular, it owns United States word mark registration for the trademark 10 CORSO (under registration number 4466033) registered on January 14, 2014. The disputed domain name wholly incorporates the 10 CORSO mark and is identical to it other than the “.com” generic-Top Level Domain (“gTLD”) element. As a result, the Panel finds that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant says that it has not licensed or permitted the Respondent to use its marks and that the Respondent has not been commonly known by the 10 CORSO mark, or done business under that name.
It notes that the disputed domain name was registered long after its marks had been used or registered in the United States and that it appears that the Respondent took advantage of the fact that the Complainant had inadvertently allowed the disputed domain name to lapse in order to jump in and secure its registration. This coupled with the evidence that the Respondent’s contact details appear to be fake and the evidence that the Respondent used the disputed domain name to divert Internet users (as discussed under Part C below) and the fact that this website has now been deleted altogether by the Respondent, supports a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
As the Respondent has failed to rebut this case, the Panel finds that the Complainant has made out its case that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith
Following the Complainant’s inadvertent lapse of the disputed domain name, it was registered by the Respondent in February 2017, many years after the Complainant had first used the 10 CORSO COMO mark internationally and some six years after it had used the 10 CORSO mark on apparel in the United States and after registration of that mark in the United States. Considering also the apparent false or out of date nature of the details of the Respondent and as discussed further below, the Respondent’s apparent use of the website at the disputed domain name to divert and confuse Internet users, the Panel infers that the Respondent registered the disputed domain name knowingly and most likely to take advantage of the Complainant’s oversight in failure to renew the disputed domain name.
The website that was formerly at the disputed domain name contains a range of fashion trend articles but also featured some commercial advertising, in particular for a fashion outlet and for a female fashion
e-commerce website. Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use in bad faith where the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. It appears to the Panel that in this case the Respondent took advantage of the lapse of the disputed domain name in order to use it to divert to a website that may well have confused Internet users as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website by the Complainant and that as a result the requirements of paragraph 4(b)(iv) are made out. This view is only reinforced by the Respondent’s apparent failure either to provide correct, or up to date, contact details.
Accordingly, the Panel finds that the disputed domain name was registered and used in bad faith and the Complaint succeeds under this 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 name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: August 10, 2017
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