The Complainant is Salvatore Ferragamo S.p.A. of Italy, represented by Spheriens Avvocati, Italy.
The Respondent is Chao Yue of Zaozhuang, Shandong, China, self-represented. 2. The Domain Names and Registrar
The disputed domain names and are registered with Chengdu West Dimension Digital Technology Co., Ltd. and Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”), respectively. 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2019. On February 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On February 21, 2019, 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. On February 27, 2019, the Center received an amendment to the Complaint from the Complainant requesting to add the disputed domain name . On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On February 28, 2019, 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.
On February 22, 2019 and March 4, 2019, the Center sent communications to the Parties, in English and Chinese, regarding the language of the proceeding. On February 25, 2019 and March 6, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of 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 the Respondent, in English and Chinese, of the Complaint, and the proceedings commenced on March 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2019. The Center received the Respondent’s various informal email communications on March 17, 20, 21, 22, 25, and 27, 2019, as well as on April 4, 2019. On March 18, 2019, the Center sent a communication to the Parties regarding possible settlement. On March 21, 2019, the Complainant requested suspension, and the proceeding was suspended until April 21, 2019 for settlement discussions. On March 27, 2019, the Complainant requested reinstitution, and the proceeding was reinstituted as of March 27, 2019, with the Response due date being April 5, 2019. No formal Response was filed by the Respondent. On April 9, 2019, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on April 25, 2019. 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
In its Complaint, the Complainant adduces several trademarks (word marks) protecting the sign “Ferragamo”, e.g., International Registration No. 397649 registered on March 23, 1973 and designating, inter alia, China; and European Union registration No. 103259 registered on April 20, 1998. The Complainant also owns a portfolio of domain names, including , registered on February 11, 1996, and , registered on November 23, 2004.
The Respondent registered the disputed domain names on January 6, 2019 and on August 6, 2018. The disputed domain names are not linked to active websites. 5. Parties’ Contentions A. Complainant
The Complainant is an Italian company active in the fashion industry. The Complainant has business operations in a large number of countries, including in China, where it has brick-and-mortar stores in 16 cities. The Complainant essentially contends that the disputed domain names are identical to its trademark for FERRAGAMO, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith. The Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent is a natural person from Zaozhuang, Shandong, China. The Respondent’s contentions are limited to a number of emails it sent between March 17, 2019 and April 4, 2019. In these brief emails, it discussed the possibility of, and formalities for a settlement, and insisted on a settlement fee to be paid by the Complainant, for which it suggested an amount of around USD 1,000. The Respondent did not submit any arguments on the merits of this case, and did not comment on the language of the proceeding. 6. Discussion and Findings 6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement.
The Complainant states that, to the best of its knowledge, the language of the Registration Agreement is English, and provides the Panel with a copy of the Registration Agreement in English. The Respondent did not comment on the language of proceedings, even though it had the opportunity to do so (in either Chinese or English). The Panel therefore rules that the language of proceedings shall be English. 6.2. Discussion and Findings
The Policy requires the Complainant to prove three elements:
(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.
Based on the evidence submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has valid rights in the sign “FERRAGAMO” based on its intensive use and registration of the same as a trademark; incidentally commencing many years prior to the registration of the disputed domain names.
Moreover, the disputed domain names are identical to the Complainant’s trademark FERRAGAMO, incorporating it in its entirety. The generic Top-Level Domains “.club” and “.store” must be disregarded by the Panel and do not avoid the finding of confusing similarity between the disputed domain names and the Complainant’s trademark. Accordingly, the Panel rules that the disputed domain names are identical to the Complainant’s trademark so that the first element required by the Policy is fulfilled. B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel notes that the Respondent is not a licensee or authorized reseller, service provider or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply (see also Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001‑0903). The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant’s trademark, even in the Respondent’s home jurisdiction China, the registration of the disputed domain names, which include such trademark in their entirety, is clearly intended to mislead and divert consumers to the disputed domain names. Even a cursory Internet search at the time of registration of the disputed domain names would have already made it clear to the Respondent that the Complainant owns trademarks in “FERRAGAMO” and uses them extensively. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain names in bad faith.
As to use of the disputed domain names in bad faith, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.3 states in this regard: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. Having regard to all elements of the case at hand, and in particular to the identity between the Complainant’s trademark and the disputed domain names, to the distinctiveness and intensive use of the Complainant’s trademark, even in the Respondent’s home jurisdiction China, and to the pattern of abusive domain name registrations by the Respondent, as established by the Complainant (see the Respondent’s domain name registrations for other third party brands e.g., , , , etc., as put into evidence in this case), the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain names in bad faith. Moreover, this finding of bad faith is reinforced by the declarations of the Respondent emailed during the settlement negotiations, where it indicated that it required a “fee” for the transfer of the disputed domain names, for which it suggested an amount of around USD 1,000, which is an amount in excess of its documented out-of-pocket costs directly related to the disputed domain names, which further substantiates its bad faith. See in this regard, paragraph 4(b) of the Policy.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third requirement under 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 names and be transferred to the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: May 6, 2019
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