The Complainant is Calzedonia S.p.A. of Malcesine, Italy, represented by Novagraaf Nederland B.V., the Netherlands.
The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States of America (the “United States”). 2. The Domain Names and Registrar
The disputed domain names and are registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2019. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant 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 April 8, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 9, 2019.
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 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2019.
The Center appointed Jane Seager as the sole panelist in this matter on May 10, 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
Founded in 1987, the Complainant is a company headquartered in Italy, specialized in the sale of clothing for men and women, specifically nightwear, underwear and beachwear.
In connection with its clothing products, the Complainant is the owner of, inter alia, the following trademarks:1
- International Trademark Registration No. 692492, INTIMISSIMI, registered on April 20, 1998;
- European Union Trade Mark Registration No. 001978808, INTIMISSIMI, registered on April 2, 2002;
- European Union Trade Mark Registration No. 001874452, CALZEDONIA, registered on April 3, 2002;
- United States Trademark Registration No. 3109752, INTIMISSIMI, registered on June 27, 2006;
- International Trademark Registration No. 1180100, CALZEDONIA, registered on August 5, 2013; and
- United States Trademark Registration No. 4615602, CALZEDONIA, registered on October 7, 2014.
The disputed domain names were both registered on May 11, 2018. Prior to the filing of the Complaint, the disputed domain names both resolved to parking pages operated by the Registrar, displaying pay-per-click (“PPC”) advertising, including links to the Complainant’s website, the Complainant’s competitors, and a variety of third-party websites advertising other unrelated products. At the time of this decision, the disputed domain names no longer resolve to active websites. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is the owner of various trademarks for INTIMISSIMI and CALZEDONIA, as outlined in the factual background section above. The Complainant contends that the disputed domain names are identical to the Complainant’s trademarks. The Complainant further submits that the generic Top‑Level Domain (“gTLD”) “.app” is viewed as a standard registration requirement, and therefore may be disregarded under the first element confusing similarity test.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant asserts that the Respondent does not own any rights in the trademarks INTIMISSIMI or CALZEDONIA, nor does it hold any other rights to those denominations. The Complainant states that it has not licensed or otherwise permitted the Respondent to use its trademarks or any variation thereof. The Complainant asserts that its trademarks are well known and are invented words. The Complainant states that the Respondent was aware of the Complainant at the time of registration of the disputed domain names, and that the Respondent uses the disputed domain names to advertise various types of goods and services, amongst which are the Complainant’s brands as well as competing lingerie brands.
The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant states that it has been active in fashion retail for over 30 years, active in multiple countries throughout the world through both online and physical stores. The Complainant submits that in light of the INTIMISSIMI and CALZEDONIA trademarks being well-known and highly specific trademarks, the Respondent knew or should have known that the disputed domain names would be identical to the Complainant’s trademarks. The Complainant asserts that the use of the disputed domain names in connection with parking pages displaying PPC links to various clothing companies, including the Complainant, creates an unwanted relationship between the Complainant and the websites appearing at the disputed domain names. The Complainant notes that the “.app” gTLD was created with the main goal to “persuade app developers to register the domain extension”, and that the Respondent registered the disputed domain names shortly after the release of the “.app” gTLD, but has not expressed any intention to use the disputed domain names or any affiliated app. The Complainant asserts that the use of the disputed domain names in connection with pages displaying PPC advertising, including links to the Complainant’s competitors, harms the Complainant’s business. The Complainant also claims that the Respondent seeks to benefit commercially from the use of the disputed domain names in such a manner, within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Matter: Consolidation of Respondents
Paragraph 3(c) of the Rules states that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”, and yet identity of the underlying registrant has not been disclosed by the Registrar.
Noting that both disputed domain names were registered at approximately the same time, on the same date, with the same registrar, using the same privacy service, under the same gTLD, both targeting trademarks owned by the Complainant, the Panel is satisfied that the disputed domain names are either registered to the same entity or individual, or are subject to common control, and that would be equitable and procedurally efficient to allow the Complaint to proceed in relation to both disputed domain names. 6.2. Substantive Matters
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove, on the balance of probabilities, that:
(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 the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the INTIMISSIMI and CALZEDONIA trademarks, details of which are set out in section 4 above.
The disputed domain name incorporates the Complainant’s CALZEDONIA trademark in its entirety, without alteration or addition. Similarly, the disputed domain name incorporates the Complainant’s INTIMISSIMI trademark in its entirety, without alteration or addition. The gTLD “.app” is disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Panel finds that the disputed domain names are identical to the Complainant’s trademarks, and that the requirements of paragraph 4(a)(i) of the Policy are met. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Complainant has provided evidence in the form of screen captures showing that prior to the filing of the Complaint, the disputed domain names both resolved to parking pages operated by the Registrar, displaying PPC links, including to the Complainant’s website, the Complainant’s competitors, and a variety of third-party websites advertising other unrelated products. Prior UDRP panels have found that the use of a domain name in connection with a parking page displaying PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. The Panel notes that the Complainant’s trademarks are coined terms that appear to be principally associated with the Complainant. As such, the Panel does not consider the Respondent’s use of the disputed domain names in connection with parking pages displaying PPC links to be bona fide. Rather, in the view of the Panel, the Respondent has sought to take commercial advantage of the goodwill associated with the Complainant’s trademarks. The Panel finds that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The disputed domain names were registered using a privacy service, and the underlying registrant of the disputed domain names has not been disclosed. There is no evidence to support a finding that the Respondent is commonly known by the disputed domain names, or any name corresponding to the disputed domain names, in accordance with paragraph 4(c)(ii) of the Policy.
The primary use of the disputed domain names has been in connection with parking pages displaying PPC links, from which it is inferred that the Respondent (or another) derives commercial benefit. There is no evidence of the disputed domain names being used for any legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.
Based on the evidence produced by the Complainant, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not come forward with any evidence to rebut the Complainant’s contentions or evidence in this regard.
In light of the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to the Complainant, its Intimissimi brand was created (through its predecessor in interest) in 1986, and its Calzedonia brand was established in 1992. The Complainant, through its franchisor network, has opened over 2,100 Calzedonia retail stores and over 1,500 Intimissimi stores in over 50 countries and territories throughout the world. The Complainant’s CALZEDONIA and INTIMISSIMI trademarks substantially predate the registration of the disputed domain names in 2018. As noted above, the Complainant’s trademarks consist of coined terms that appear to be exclusively associated with the Complainant. The disputed domain names identically reproduce the Complainant’s trademarks under the “.app” gTLD. The Panel notes that the disputed domain names were registered on May 11, 2018, only some days after the “.app” gTLD was made generally available. The Panel infers from the above that the Respondent registered the disputed domain names with the Complainant’s trademarks in mind, with a view to preventing the Complainant from reflecting its trademarks under the “.app” gTLD.
The disputed domain names have been used in connection with parking pages displaying PPC links, referring to the Complainant, competitors of the Complainant, as well as a range of unrelated third-party products. For reasons set out under the preceding section, the Panel does not consider such use of the disputed domain names to be bona fide. Rather, the Panel infers from the use of the disputed domain names, which identically reproduce the Complainant’s trademarks, that the Respondent has sought to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its websites pursuant to paragraph 4(b)(iv) of the Policy.
That the disputed domain names no longer resolve to active websites has not altered the Panel’s finding that the disputed domain names are being used in bad faith. In the circumstances of the present case, noting the distinctiveness and widespread reputation of the Complainant’s trademarks, the Panel cannot conceive of any use of the disputed domain names by the Respondent that would not seek to take unfair advantage of or create a misleading impression of association with the Complainant’s trademarks. In this instance, the Panel also considers the Respondent’s use of a privacy service to mask its identity to be an additional indicator of bad faith.
For the foregoing reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith, and that the requirements of paragraph 4(a)(iii) of the Policy are met. 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.
Jane Seager
Sole Panelist
Date: May 16, 2019
1 The Panel notes that certain trademarks were first registered by the Complainant’s predecessors in interest; however, ownership of such trademarks has been duly transferred to the Complainant.
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