WIPO Domain Name Decision D2020-0331 for intimissimi-italy.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Calzedonia S.p.A. v. Intimissimi Spa Case No. D2020-0331 1. The Parties

Complainant is Calzedonia S.p.A., Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.

Respondent is Intimissimi Spa, Italy. 2. The Domain Name and Registrar

The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2020. On February 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differ from Respondent’s name and contact information in the Complaint. The Center sent an email communication to Complainant on February 14, 2020 the registrant and contact information disclosed by the Registrar, inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment of the Complaint on February 14, 2020.

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 Respondent of the Complaint, and the proceedings commenced on February 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 11, 2020.

The Center appointed Eva Fiammenghi as the sole panelist in this matter on March 13, 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

Calzedonia S.p.A. is a well-known Italian fashion company established in Verona by Sandro Veronesi in 1986.

Complainant has single-brand stores in over 50 countries and it is one of the main players in its business sector in Europe with 62% of the stores placed outside Italy (Paris, London, Moscow, Barcelona, Dubai, Hong Kong, New York, Sao Paulo, Shanghai, Tokyo and many other international metropolitan areas).

One of the Complainant’s most famous trademarks is “INTIMISSIMI”, launched in 1996 which quickly became the leader in the lingerie and intimate market.

Complainant is the owner, among others, of the following registrations for the trademark “INTIMISSIMI”:

- European Trademark Registration “INTIMISSIMI” No. 1978808 registered on April 2, 2002;

- International Trademark Registration “INTIMISSIMI” No. 692492, registered on April 20,1998.

Moreover, Complainant is also the owner, among the others, of the domain names:

- ,
- ,
- ,
-

The disputed domain name is a reproduction of the Complainant’s trademark, except that Respondent has added the word ‘Italy’.

The disputed domain name was registered on December 12, 2018 and is being redirected to Complainant’s website. 5. Parties’ Contentions A. Complainant

Complainant argues that the disputed domain name is confusingly similar to its INTIMISSIMI trademarks and its domain names.

Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name.

Complainant also argues that Respondent has registered and used the disputed domain name in bad faith.

The disputed domain name reproduces exactly Complainant’s trademarks and domain names, in addition Respondent connected the disputed domain name to Complainant’s official website creating an email address in order to impersonate Complainant.

This conduct confirms that Respondent knew Complainant and its trademark rights and he is clearly carrying out a phishing scam.

Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent

Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed, Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights and,

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name and,

(iii) the disputed domain name was registered and is being used in bad faith.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the panel shall decide the complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. A. Identical or Confusingly Similar

In the present case, the disputed domain name incorporates the word “intimissimi”, which is identical to Complainant’s registered well-known trademark INTIMISSIMI.

It is clear that the disputed domain name incorporates in its entirety the INTIMISSIMI trademark to which the geographic term “Italy” has been added.

The disputed domain name is only relevantly different from Complainant’s trademark by the inclusion of a hyphen between “intimissimi” and “italy”. It is well established that the generic Top-Level Domain (“gTLD”) “.com”, being a necessary component of a domain name, may be disregarded for the purpose of comparison under this ground. A number of previous UDRP decisions, including cases specifically involving Complainant’s marks, have found that a hyphen does not distinguish the domain name from a trademark in which a complainant has established rights. See e.g., Giorgio Armani S.p.A. v. lv kefeng,WIPO Case No. D2011-0740.

The disputed domain name reproduces the term “intimissimi” in its entirety, and combines it with the term “Italy”. The term “Italy” refers to a geographic location. The confusing similarity is not dispelled by combination with the descriptive term “Italy”. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name).

Therefore, the Panel considers that the disputed domain name which incorporates a geographic term with a registered trademark may be considered identical or confusingly similar to the trademark for the purpose of the Policy (See The Swatch Group AG, Swatch AG v. thomas, thomas bolton,WIPO Case No. D2019-1771; Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658).

The Panel finds the first element of the Policy has, therefore, been met. B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), Complainant has to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent is not in any way affiliated with Complainant, nor has Complainant authorized or licensed Respondent to use its trademark, or to seek registration of any domain name incorporating said trademark.

Complainant has presented a prima facie case and argues that Respondent has not provided any evidence demonstrating that Respondent might be commonly known by the disputed domain name, or that Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Panel finds that Respondent cannot claim that he is unaware of Complainant’s marks. On the contrary, the Panel notes the submitted evidence that the disputed domain name has been used for a phishing purposes, as further discussed below, which use cannot be considered a bona fide use.

The Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.

The Panel finds the second element of the Policy has, therefore, been met. C. Registered and Used in Bad Faith

The fact that the disputed domain name is being used to send phishing emails is a strong indication that Respondent’s intentions for the disputed domain name are not well-meaning.

The Panel further finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, which is contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. The Panel finds Internet users may be led to believe that the disputed domain name is owned by Complainant or is run by an official authorized partner of Complainant, which is not the case.

On the basis of the above, the Panel finds that Respondent registered and is using the disputed domain name to disrupt Complainant’s business and attract Internet users, for its commercial gain, by creating a likelihood of confusion with Complainant’s trademarks and domain names (Policy, paragraphs 4(b)(iii) and (iv)).

The Panel finds the third element of the Policy has, therefore, been 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 name be transferred to Complainant.

Eva Fiammenghi
Sole Panelist
Date: March 26, 2020

Full & Egal Universal Law Academy