The Complainant is Calzedonia S.p.A. of Malcesine, Italy, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Contact Privacy Inc. Customer 0149668853 of Toronto, Canada / Francisco Gimenez Hernandez, intimisimi of Cuenca, Spain and Contact Privacy Inc. Customer 0150307728 of Toronto, Canada / INTIMISIMI STORE, intimisimi of Cuenca, Spain. 2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2018. On February 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 2, 2018, the Registrar transmitted by email to the Center its verification response disclosing two underlying registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 6, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center requested the Complainant to either amend the Complaint providing relevant arguments or evidence demonstrating that the two underlying registrants are the same entity and/or that the disputed domain names are under common control; or to file a separate complaint for any domain name for which it is not possible to demonstrate that. The Complainant filed an amended Complaint on February 9, 2018.
The Center verified that the Complaint together with the amended 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 February 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2018.
The Center appointed George R. F. Souter as the sole panelist in this matter on March 15, 2018. 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 the proprietor of the trademark INTIMISSIMI, which is used in connection with the sale of underwear and nightwear. Details of extensive registration of the INTIMISSIMI trademark internationally, including United States of America (“US”) registration No. 4570472 registered on July 22, 2014 and European Union Trade Mark (“EUTM”) registration No. 11941911 registered on November 20, 2013, have been supplied to the Panel. The Complainant operates a franchising network, and over 1200 shops in 31 countries sell INTIMISSIMI products.
The disputed domain name was registered on November 1, 2017 and the disputed domain name was registered on January 7, 2018. According to the evidence provided by the Complainant both disputed domain names resolved to a website selling lingerie for men and women. The disputed domain name was redirecting to the disputed domain name . 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to its INTIMISSIMI trademark, with the mere addition of the descriptive or non-distinctive element “store” and “shop” respectively.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain names, in particular that, to the best knowledge of the Complainant, the Respondent does not own any rights to the trademark INTIMISSIMI, nor does the Respondent have any other right to the denomination “Intimissimi”. The Complainant also did not give their consent to the Respondent to use and/of refer to the trademark INTIMISSIMI in their domain names nor for any other purpose, and states that there is no commercial link between the Complainant and the Respondent.
The Complainant alleges that the disputed domain names were registered in bad faith, and are being used in bad faith in connection with websites selling competing products to those of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names be transferred to the Complainant:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have 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. Consolidation of Respondents
The Complainant requested the consolidation of the Respondents and claimed that the disputed domain names are subject to a common control. In particular, the Complainant noted that the disputed domain names display an identical website, the disputed domain name redirects to the disputed domain name , the WhoIs information shows that both disputed domain names are registered to an organization with the name “Intimisimi” and consequently it appears that both disputed domain names are under common control.
In light of the Complainant’s arguments and considering that this consolidation would be fair and equitable to the Parties, the Panel accepts the Complainant’s request for consolidation. B. Identical or Confusingly Similar
The Complainant has satisfied the Panel that it has sufficient trademark rights in their INTIMISSIMI trademark for the purposes of these proceedings.
It is well-established in prior decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g. “.com”, “.org” and “.net”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view, and considers the gTLD indicator to be irrelevant in the present case.
It is well-established in prior UDRP decisions under the Policy that the mere addition of a descriptive or non-distinctive element to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel regards the added elements “store” and “shop” respectfully to be either descriptive or non-distinctive elements, and, accordingly finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain names to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstances of the present case, in which the Panel believes that the Respondent has clearly had the Complainant’s trademark in mind when constructing the disputed domain names, the Panel regards it as appropriate to find that the disputed domain names were registered in bad faith, and so finds.
It is well-established in prior UDRP decisions under the Policy that the use of a disputed domain name held to be confusingly similar to a trademark in which the complainant has rights in connection with a website offering products competing with those of the complainant, constitutes use of the disputed domain name in bad faith. In the circumstances of the present case, the Panel so finds in connection with both disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) of the Policy, in respect of both disputed domain names. 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.
George R. F. Souter
Sole Panelist
Date: March 28, 2018
Full & Egal Universal Law Academy