The Complainant is YOOX NET-A-PORTER GROUP S.p.A. of Milan, Italy, represented by Jaumann S.R.L., Italy.
The Respondent is Congj Buxar of Clemmons, North Carolina, United States of America (“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 September 28, 2018. On September 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2018, 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2018. In accordance with paragraph 5 of the Rules, the due date for the response was October 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2018.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 13, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a global online luxury fashion retailer and the registered owner of international trademark number 1203357 for LEONARDO PRINCIPI (the “Leonardo Principi Mark”) with a priority of February 6, 2014, based on an Italian registration and effective inter alia in the European Union and the United States for goods in classes 18 and 25.
The disputed domain name was first registered on August 15, 2017. The website at the disputed domain name currently resolves to an online shop selling footwear under the Leonardo Principi Mark, also displaying Canadian trademark number TMA969869 owned by the Complainant for the figurative trademark LP with a priority of March 26, 2014.
The Complainant sent a cease-and-desist letter by email to the Respondent on January 23, 2018, which remained unanswered.
There are three earlier cases decided under the UDRP against the Respondent, all dealing with domain names consisting of third parties’ trademarks for clothing or footwear plus the descriptive term “outlet” (Zimmermann Wear Pty Ltd. v. Congj Buxar, NAF Claim No. 1761720; Na’ale Naot Agricultural Cooperative Society for Business Ltd. / Yaleet, Inc. v. Congj Buxar,WIPO Case No. D2017-2558; Seafolly Pty Limited and Seafolly IP Co. Pty Ltd. v. Congj Buxar,WIPO Case No. D2018-1007). 5. Parties’ Contentions A. Complainant
With regard to the three elements specified in paragraph 4(a) of the Policy, the Complainant contends that each of the three conditions is given in the present case.
(i) LEONARDO PRINCIPI is an imaginary and arbitrary name created by the Complainant as a “private label”. The disputed domain name is supposed to be confusingly similar to the Leonardo Principi Mark as simply a dash was added between the two words.
(ii) The Respondent allegedly has no rights or legitimate interests in respect of the disputed domain name since there is no evidence that the Respondent is using or has prepared to use the disputed domain name in connection with a bona fide offering of goods or services, since the Respondent is not affiliated with the Complainant nor has the Complainant authorized or licensed the Respondent, since the Respondent is making an illegal use of photographs of the Complainant’s trademarked footwear, and since the Respondent is also using the Complainant’s figurative trademark LP.
(iii) The Complainant alleges that the disputed domain name was registered and is being used in bad faith. When registering the disputed domain name, the Respondent must have been aware of the Complainant’s Leonardo Principi Mark because of the inclusion of the entire trademark in the disputed domain name, and the use of both the Complainant’s figurative LP mark and the photographs of the Complainant’s merchandise on the website at the disputed domain name. The Respondent adopted the Complainant’s trademarks for its own profit and is misleading consumers to believe that the Respondent’s website is operated by or linked to the Complainant. By using the disputed domain name, the Respondent intentionally attempts to attract for commercial gain Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Leonardo Principi Mark as it contains such trademark in its entirety, merely adding a dash between the two words.
The Panel finds that the Complainant satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panels that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, once a prima facie case is made, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the burden of production has been shifted to the Respondent.
The Respondent did not deny these assertions in any way and therefore failed to come forward with any allegations or evidence demonstrating any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either.
The Respondent is using the disputed domain name for a website offering products at least similar to the Complainant’s products and using the Complainant’s trademarks. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if the use fits certain requirements, with regard to the actual offering of goods, the use of the site to sell only the trademarked goods, and the site is accurately and prominently disclosing the registrant’s relationship with the trademark holder (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; section 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). According to the evidence on the record, however, the website at the disputed domain name does not visibly disclose the registrant’s relationship with the trademark holder, therefore does not meet the Oki Data criteria, and cannot convey any rights or legitimate interests on the Respondent’s use of the disputed domain name.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the Leonardo Principi Mark and thus in bad faith as the Respondent used the disputed domain name in connection with a website featuring the Complainant’s products.
As to bad faith use, by fully incorporating the Leonardo Principi Mark into the disputed domain name and by using such domain name for a website advertising the Complainant’s products, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
Moreover, considering the facts of the three earlier cases decided under the UDRP against the Respondent quoted above, the Respondent has engaged in a pattern of conduct by registering at least four domain names closely corresponding to third parties’ trademarks and redirecting them to websites advertising such third parties’ brands (see section 3.1.2 of the WIPO Overview 3.0: “A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners.”). Paragraph 4(b)(ii) of the Policy provides that this circumstance is also evidence of use of a domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of 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 name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Date: November 23, 2018
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