The Complainant is Valentino S.p.A., Italy (“Complainant”), represented by Studio Barbero S.p.A, Italy.
The Respondent is Lijin Liu, China (“Respondent”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2020. On January 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2020. The Center appointed M. Scott Donahey as the sole panelist in this matter on February 12, 2020. 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 Complainant is a famous brand name company whose products are available in over 90 countries and in 160 stores owned and operated by Complainant in expensive shopping districts. Complainant has stores in China, where Respondent is purportedly based. In 2010 Complainant signed a global licensing agreement with Puig for Valentino Perfumes, and in June 2011 Complainant signed a similar agreement with Marchon for Valentino eyewear. More recently, Complainant signed new license agreements for eyewear products and with L’Oreal for Perfumes. Complaint, Annex 5.1. Time Magazine reported that Valentino was the second most widely owned luxury brand in China in 2007. Complaint, Annex 5.4. In 2018, Pierpaolo Piccioli, one of Complainant’s two Creative Directors, was named the Designer of the Year at the British Fashion Council’s Annual Fashion Awards. Complainant has the following trademark registrations, among many others, for the mark VALENTINO: International trademark registration no. 570593 registered on April 24, 1991; European Union Trade Mark registration no. 001990407 registered on September 18, 2008; United States of America trademark registration no. 0910955 registered on April 6, 1971; and Italian trademark registration no. 0004022770 registered on February 24, 1972. Complaint, Annexes 4.1, 4.2, 4.3, and 4.5. Indeed, Complainant has regularly used the trademark VALENTINO for more than 50 years in connection with products in the high-fashion and leather industry, including ready-to-wear clothes, handbags, small leather goods, luggage, shoes jewelry, gifts, eyewear, and fragrances. Complainant is the owner of over 600 domain names identical to or comprising the VALENTINO mark. Complaint, Annex 7. Among those domain names in the domain name Respondent registered the disputed domain name on January 22, 2015. Complaint, Annex 1. Complainant did not become aware of Respondent’s use of the disputed domain name until January 2017. Respondent used the disputed domain name to resolve to a website in the English language which featured Complainant’s VALENTINO trademarks, and which promoted and offered for sale purported Valentino products. Complaint, Annex 10.1. Based on the low prices at which such products were being offered, Complainant believes that the products being offered were counterfeit. Complaint, annex 10.2. Complainant’s representative sent cease-and-desist letters on January 18, 2017 and on February 17, 2017. Respondent failed to reply to either. Complaint, Annexes 12.1 through 12.4. On May 1, 2017, the Registrar informed Complainant’s representative that the contact information had been updated to that listed in the Complaint. Complaint, Annex 13.1. A reminder of the prior cease-and-desist letters was sent to the current disputed domain name holder. The disputed domain name is currently pointing to a Windows server default web page. Complaint, Annex 16. 5. Parties’ Contentions A. Complainant Complainant alleges that the disputed domain name is confusingly similar to Complainant’s VALENTINO trademark. Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name in that Complainant has never licensed nor authorized Respondent to use the disputed domain name or Complainant’s registered trademark in any fashion (pun intended). B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant is the owner of the famous VALENTINO trademark. The disputed domain name registered by Respondent consists of that famous trademark together with the English word “sale.” As the trademark is clearly recognizable in the disputed domain name, the addition of the dictionary word “sale” does not prevent a finding of confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Accordingly, the disputed domain name is confusingly similar to Complainant’s registered trademark. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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. WIPO Overview 3.0, section 2.1. In the present case Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights or legitimate interests. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was originally being used in conjunction with the unauthorized use of Complainant’s registered trademarks together with an offer for sale of presumably counterfeit goods at prices far below their customary retail prices. The clear implication of the disputed domain name is that goods originating with Complainant or its authorized dealers are being offered at below standard retail prices. In fact, Complainant has not authorized any use of its famous trademark, nor any sale of its trademarked merchandise by Respondent at any price. Currently, it is being used to resolve to a Windows server default web page. In either case, the disputed domain name has been registered and is being used in bad faith. Even nonuse of the disputed domain name has long been held to be bad faith use in certain circumstances. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.2. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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, M. Scott Donahey
Sole Panelist
Date: February 25, 2020
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