The Complainant is Calzedonia S.p.A., Italy, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Virginia Peretti, Il Tuo Futuro SRL, Italy. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2020. On March 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 13, 2020, 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 March 16, 2020, 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 amendment to the Complaint on March 16, 2020. The Center received an email communication from the Respondent on March 17, 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 the Respondent of the Complaint, and the proceedings commenced on March 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2020. The Respondent did not submit any response. On April 8, 2020, pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed with panel appointment. The Center appointed Edoardo Fano as the sole panelist in this matter on April 9, 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. The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal response from the Respondent. The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules. 4. Factual Background The Complainant is Calzedonia S.p.A., an Italian company operating on a worldwide basis in the field of underwear, legwear, and beachwear with, among others, the trademarks CALZEDONIA and INTIMISSIMI, and in the field of food and wine with the trademark SIGNORVINO, owning several trademark registrations for CALZEDONIA, INTIMISSIMI, and SIGNORVINO, among which the following ones: - European Union Trademark Registration No. 001874452 for CALZEDONIA, registered on April 3, 2002; - International Trademark Registration No. 1180100 for CALZEDONIA, registered on August 5, 2013; - Italian Trademark Registration No. 772361 for INTIMISSIMI, registered on February 10, 1999; - European Union Trademark Registration No. 001978808 for INTIMISSIMI, registered on April 2, 2002; - International Trademark Registration No. 692492 for INTIMISSIMI, registered on April 20, 1998; - European Union Trademark Registration No. 010684439 for SIGNORVINO, registered on July 31, 2012; and, - International Trademark Registration No. 1237274 for SIGNORVINO, registered on December 29, 2014. The Complainant’s trademarks CALZEDONIA, INTIMISSIMI, and SIGNORVINO are also represented in domain names under several Top-Level Domains, both generic and country-code, registered by the Complainant. The Complainant provided evidence in support of the above. The disputed domain names The Complainant states that the disputed domain names are identical to its trademarks CALZEDONIA, INTIMISSIMI, and SIGNORVINO. Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademarks within the disputed domain names and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademarks CALZEDONIA, INTIMISSIMI, and SIGNORVINO are distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademarks at the time of registration of the disputed domain names and the Complainant contends that, even if at present the websites attached to the disputed domain names are inactive as ICANN verifications are pending, any future use of the disputed domain names would inevitably lead to confusion among Internet users. B. Respondent The Respondent has made no formal response to the Complainant’s contentions. However, the Respondent submitted an informal email communication on March 17, 2020. In this email communication, the Respondent stated the following in regards to the Center’s acknowledgement of receipt of the Complainant’s amended Complaint: “Good Morning, The attachments do not open.” The Respondent has submitted no additional communications, including after being formally notified of the Complaint on March 18, 2020. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademarks CALZEDONIA, INTIMISSIMI, and SIGNORVINO and that the disputed domain names are identical to the trademarks CALZEDONIA, INTIMISSIMI, and SIGNORVINO. It is well accepted that a generic Top-Level Domain (“gTLD”), in this case “.space”, “.tech”, “.club”, “.online”, “.site”, and “.website”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com,WIPO Case No. D2000-0607). The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are identical to the Complainant’s trademarks, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Respondent has failed to file a formal Response in accordance with the Rules, paragraph 5. The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests he may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”. Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademarks CALZEDONIA and INTIMISSIMI, in the field of underwear, legwear, and beachwear, and SIGNORVINO in the field of food and wine, is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names, especially because the three trademarks targeted by the Respondent belong to the same company, i.e. the Complainant. As regards the use in bad faith of the disputed domain names, all of them pointing to inactive websites, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Edoardo Fano
Sole Panelist
Date: April 17, 2020
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