The Complainant is Fendi S.r.l. of Rome, Italy, represented by Studio Barbero, Italy.
The Respondent is Mou Zeghloul of Pittsburgh, Pennsylvania, United States of America (“United States”); Debbie Puccio of Lake Mary, Florida, United States; Imus Jones of St Lucie, Florida, United States. 2. The Domain Names and Registrar
The disputed domain name , , 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 April 4, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 5, 2018, the Registrar transmitted by email to the Center its verification response providing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 26, 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 April 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 5, 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 an international fashion house which can trace its origins back to 1925 when Adele and Edoardo Fendi opened a family-run fur and leather shop in Rome. The FENDI trademark has been used by the Complainant and its predecessor in title for more than 90 years in connection with high-fashion and leather products including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, eyewear, fragrances and home furniture. The Complainant’s activities are global in nature. It operates 33 flagship shops and boutiques in the United States where the Respondent is apparently based. The Complainant makes a substantial investment in advertising, research and development, and in its distribution channels, and asserts that its FENDI trademark is very well-known worldwide.
The Complainant is the owner of multiple trademark registrations worldwide for the word mark FENDI, including International Trademark Registration No. 1244079 registered on January 22, 2015 in Classes 36 and 37 designated inter alia in respect of the United States.
Little is known about the Respondent other than the information on the WhoIs records in respect of the disputed domain names. This suggests that the Respondent has a connection with or geographic link to the United States. The disputed domain names were created between May 12, 2017 and June 23, 2017 and point to websites of similar appearance which display the Complainant’s FENDI trademark, without any disclaimer of non-affiliation, together with images which appear to have been taken from the Complainant’s official advertising campaigns. On said websites, products which have not been authorized by the Complainant and which bear its FENDI trademark are offered for sale at very discounted prices with no disclosure of detailed information about the company managing the websites. The Complainant asserts that these circumstances suggest that the goods on the said websites are very likely counterfeit. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has (or the Respondents have) no rights or legitimate interests in the disputed domain names and that the disputed domain names have been registered and are being used in bad faith.
The Complainant asserts that the disputed domain names incorporate the entirety of the Complainant’s trademark with the mere addition of generic terms, which it notes is a circumstance that does not affect confusing similarity. The Complainant adds that it is a well-established principle that domain names that wholly incorporate a trademark, in particular one as well-known as FENDI, are found to be confusingly similar for purposes of the Policy, despite the fact that they may contain descriptive or generic terms. The Complainant cites various previous decisions under the Policy involving the FENDI mark where confusing similarity has been found on this basis. The Complainant adds that the generic words are apt to reinforce the likelihood of confusion with the Complainant’s mark, as they refer to products and places where the Complainant’s products could be purchased, namely “handbags”, “shop”, “store”, “outlet” and the geographical abbreviation “US”.
The Complainant contends that the Respondent is not a licensee or an authorized agent of the Complainant nor is in any other way authorized to use the Complainant’s FENDI trademark. The Complainant notes that the Respondent is not commonly known by the disputed domain names as an individual, business or other organization, nor is Fendi the family name of the Respondent. The Complainant asserts that the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.
The Complainant asserts that the disputed domain names are redirected to commercial websites publishing the Complainant’s figurative trademarks together with the Complainant’s official images. The Complainant adds that such sites feature FENDI branded products, which the Complainant submits are very likely counterfeit given the heavily discounted prices listed. The Complainant adds that such willful conduct demonstrates that the Respondent does not intend to use the disputed domain names in connection with any legitimate purpose and that their use cannot be considered a legitimate noncommercial or fair use without intent for commercial gain because the Respondent will have been gaining from the sale of products bearing the Complainant’s trademark. The Complainant notes that no possible fair use could be established by the Respondent given the failure of the Respondent to accurately and prominently disclose the absence of its relationship with the trademark holder or to provide any detailed information about the entity operating the online stores associated with the disputed domain names.
The Complainant asserts that as the Respondent did not reply to the cease and desist letter sent by the Complainant’s authorized representative, despite subsequent reminders addressed to its attention, the Respondent’s failure to counter the allegations of the Complainant’s cease and desist letter amounts to adoptive admission of the Complainant’s allegations by operation of a common sense evidentiary principle.
The Complainant asserts that the Respondent could not possibly have been unaware of the Complainant’s FENDI trademark when the disputed domain names were registered, given the extensive use of such mark since 1925, its worldwide fame, and in particular, its widespread use in the United States where the Respondent is apparently based. The Complainant adds that previous panels under the Policy have recognized the well-known character of the FENDI mark and cites various cases in support of that contention. The Complainant focuses on the use of the disputed domain names in connection with the Complainant’s figurative mark and imagery to demonstrate that the Respondent could not argue a lack of knowledge of, or a lack of intent to target, the Complainant’s mark.
The Complainant submits that the use of the disputed domain names demonstrates that the Respondent’s only purpose was and is to intentionally attempt to attract, for commercial gain, Internet users to the associated websites, creating a likelihood of confusion and to take unfair advantage from the well-known character of the FENDI trademark for the Respondent’s personal profit. The Complainant adds that irrespective of whether the goods offered on the Respondent’s websites are in fact counterfeit, the reproduction of the Complainant’s trademark on the Respondent’s websites without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant is in itself an indication of registration and use in bad faith.
The Complainant notes that the Respondent Mo Zeghloul has been named in two prior cases under the Policy which resulted in a finding of registration and use in bad faith, namely Yves Saint Laurent, SAS v. Mo Zeghloul,WIPO Case No. D2017-2594 and PRADA S.A. v. Artemis Davis / Mo Zeghloul / Xinqian Rhys / Xiayu Zhi / Gueijuan Xu,WIPO Case No. D2017-2069. The Complainant asserts that this constitutes a pattern of bad faith registrations targeting well-known marks. Finally, the Complainant asserts that the Respondent’s failure to reply to its representative’s correspondence is not consistent with what
one reasonably would expect from a good faith registrant accused of cybersquatting. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. Preliminary issue: Consolidation of Complaints against Multiple Registrants
The Complainant has requested that its complaints against three separate registrants regarding the four disputed domain names be consolidated within the present Complaint.
It is the consensus of previous decisions under the Policy that consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve and that such consolidation is procedurally efficient (see, for example, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 and section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) for a discussion of this topic).
Indicia of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules.
In the present case, the Panel has no difficulties in identifying suitable indicia of common control from the record. WhoIs records dated April 3, 2018 have been produced by the Complainant and the corresponding records dated April 5, 2018 bearing updates have been produced by the Registrar. The former indicates that as at April 3, 2018, all of the disputed domain names featured the registrant name and contact details of the Respondent Mo Zeghloul with identical administrative and technical contact details. The latter indicates that by April 5, 2018, the registrant name in respect of the disputed domain name had been amended to Imus Jones, and the registrant name in respect of the disputed domain name had been changed to Debbie Puccio along with the provision of new registrant contact details in each case. The record also shows that these changes took place shortly after the Complainant’s representative had communicated with the single original registrant of all of the disputed domain names to afford a final opportunity to resolve the dispute before the Complaint was filed.
The Panel notes that the changes made do not appear to be part of any registrar transfer and thus are more likely than not to be an update performed by the person controlling the disputed domain names within their existing account(s) at the Registrar. The obvious inference which may be made where there is a change in registration details at about the time when a complaint is filed and shortly after the issue of a letter before action, in the absence of evidence to the contrary, is that the registrant is likely to be engaging in cyberflight in an attempt to frustrate the proceedings (see, for example, the panel’s commentary on similar circumstances in Accor v. Jose Garcia, Jan Cerny, and N/A,Dopici Nasrat,WIPO Case No. D2010-0471). It is highly likely in these circumstances that the domain names concerned most probably remain under the de facto control of the original registrant.
In addition to the above observation, the Panel also notes that commonality remains across all of the disputed domain names regarding their present use for websites featuring substantially similar online stores and that the disputed domain names all adopt the Complainant’s trademark in a similar style and feature identical administrative and technical contact details. Furthermore, in respect of the disputed domain names and , no changes were made to the delegated nameservers, no amendment took place to renewal dates as would typically occur on a genuine registrar transfer, and no variance was made of the use of the disputed domain names after the update of registrant details.
In all of these circumstances, and in the absence of any submissions from the Respondent(s) to the contrary, the Panel finds on the balance of probabilities that the disputed domain names are all still controlled by the same entity notwithstanding the apparent adoption of different aliases and therefore that it is appropriate and procedurally efficient to consolidate the Complaint against the various registrants now named in respect of the disputed domain names. Throughout this decision, the Panel will describe these registrants in combination as “the Respondent” for ease of reference. B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has UDRP-relevant rights in its FENDI trademark by virtue of the registered marks cited in the Complaint, an example of which is noted in the factual background section above. For comparison purposes, the generic Top-Level Domain (“gTLD”) “.com” is disregarded, being required purely for technical reasons. The Panel notes that each of the second levels of the disputed domain names commences with the Complainant’s well-known FENDI trademark, followed by various descriptive terms, namely the words “handbags”, “outlet”, “shop”, “store”, and the geographic indication “US”.
Multiple previous decisions under the Policy have found that the use of descriptive or geographic terms in addition to a trademark in a domain name does not prevent such domain name from being confusingly similar. One or more descriptive elements cannot remove the overall impression made on the public by the trademark which is the dominant part of the domain name (see Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409).
In these circumstances, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain names:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
The Panel is of the view that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
In the present case, the Panel considers that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names based on the Complainant’s submissions that the Respondent is not a licensee or authorized agent of the Complainant and has no other authorization to use the Complainant’s trademarks or imagery. The Panel notes that the Respondent is using such marks and imagery in connection with the sale of heavily discounted products which, given the list prices concerned, are likely on the balance of probabilities to be counterfeit. Such activity cannot confer any rights or legitimate interests upon the Respondent in respect of the disputed domain names. The Panel accepts the Complainant’s assertion that the Respondent could not establish a case based on fair use of the disputed domain names in light of the fact that the Respondent has failed to disclose accurately and prominently the fact that it has no relationship with the Complainant nor any information regarding the entity operating the online stores found at the disputed domain names.
In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests in the disputed domain names. The Respondent has failed to file a Response in connection with this proceeding and thus has not taken up the opportunity to provide any evidence or submissions to support a claim of rights or legitimate interests in the disputed domain names. The Panel is of the opinion that the Complainant’s assertions regarding the potential use of the disputed domain names in connection with counterfeit products should be regarded as a serious allegation which calls for an answer from the Respondent. The Respondent has chosen to remain silent and accordingly no such answer has been tendered. Furthermore, the Panel has been unable to identify any matters pointing in the direction of rights and legitimate interests which the Respondent might have raised had it participated in the proceeding.
In these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case on rights and legitimate interests and therefore that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, the Complainant’s assertions focus principally on paragraph 4(b)(iv) of the Policy. In the Panel’s opinion, the Complainant makes out a compelling case that the Respondent had prior knowledge of the Complainant’s rights in its FENDI trademark and intended to target these by the registration of the disputed domain names so as to publish the associated online stores which make extensive unauthorized use of the Complainant’s mark and imagery. It is inevitable that confusion will be caused to Internet users by the disputed domain names and websites concerned and it is clear to the Panel that the Respondent intended to cause such confusion for the purpose of commercial gain.
Furthermore, the Complainant also demonstrates that a person having the same name and alleged location as one of the Respondent’s aliases in this case has been involved in two previous cases under the Policy relating to well-known brands where similar activities were taking place and findings of registration and use in bad faith were made, namely, Yves Saint Laurent, SAS v. Mo Zeghloul, supra and PRADA S.A. v. Artemis Davis / Mo Zeghloul / Xinqian Rhys / Xiayu Zhi / Gueijuan Xu, supra. To this, the Panel adds the Respondent’s attempt at cyberflight at the point when the Complaint was filed. In the absence of evidence to the contrary, these matters suggest that a bad faith motivation is likely to be behind the registration and use of the disputed domain names.
The Respondent did not file any Response or make any other reply to the Complainant’s contentions and accordingly has failed to provide any alternative explanation for its registration and use of the disputed domain names.
The Panel has been unable to identify any possible good faith motivation which the Respondent might have put forward in the circumstances of the present case.
The Panel is satisfied on the basis of the present record that the Respondent is using the disputed domain names to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the products offered for sale at such websites pursuant to paragraph 4(b)(iv) of the Policy. The Panel is also satisfied that the Respondent has engaged in a pattern of conduct which constitutes bad faith, pursuant to paragraph 4(b)(ii) of the Policy (see section 3.1.2 of the WIPO Overview 3.0 which notes that this may include a scenario where, as in the present case taken together with the prior cases under the Policy cited by the Complainant, a respondent has on separate occasions registered trademark-abusive domain names).
In all of the above circumstances, the Panel finds on the balance of probabilities that the disputed domain names have been registered and are being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Andrew D. S. Lothian
Sole Panelist
Date: June 19, 2018
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