Complainant is Fendi S.r.l., Italy, represented by Akran Intellectual Property, Italy.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) / Owen Bour, China.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2020. On October 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 26, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 30, 2020. 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 Respondent of the Complaint, and the proceedings commenced on November 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 24, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on December 11, 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 company organized under the laws of Italy which runs a luxury fashion house that belongs to the well-known LVMH group of companies. The company name and brand “Fendi” goes back to the founders of Complainant in 1925, namely Adele and Eduardo Fendi. Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to the name “Fendi”, inter alia, the following with protection also for China: - Word mark FENDI, International registration, registration number: 906325, registration date: September 18, 2006, status active. Moreover, Complainant has demonstrated to own, inter alia, the domain name Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of China who registered the disputed domain name on January 24, 2019. By the time of the rendering of this decision, the disputed domain name redirects to a website at “www.fendi-outlets.com” which prominently displays Complainant’s FENDI trademark and offers a variety of fashion products advertised as to derive from Complainant, in particular handbags, for sales prices discounted up to 90% and more; an imprint is missing. 5. Parties’ Contentions A. Complainant Complainant contends that its FENDI trademark has today acquired the status of an iconic brand, well-known all over the world, especially due to the fact that the designer Karl Lagerfeld had been with the company since 1965. Complainant submits that the disputed domain name is confusingly similar to Complainant’s FENDI trademark as it fully incorporates the latter simply added by the dash symbol and the term “outlets”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has never authorized Respondent to sell its FENDI products, (2) the website under the disputed domain name does not disclose the lack of relationship between the parties so that the public may believe that such a commercial relationship exists and that Respondent has been somehow authorized to register the disputed domain name and to sell products bearing Complainant’s well-known FENDI trademark, and (3) the website under the disputed domain name does not contain any information about Respondent or its address. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) the way in which the disputed domain name is used leaves no doubt that Respondent is perfectly aware of Complainant’s FENDI trademark and is attempting to profit therefrom, (2) the unrealistic prices for which Respondent pretends to offer original FENDI products exclude the possibility that those products were purchased directly from Complainant or from an official affiliated producer. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name The disputed domain name incorporates the FENDI trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, neither the addition of the descriptive term “outlets” nor of a dash dispels the confusing similarity arising from the incorporation of Complainant’s FENDI trademark in the disputed domain name. Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its FENDI trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name “Fendi” on its own. Finally, Respondent apparently has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, the disputed domain name resolves to a website at “www.fendi-outlets.com” showing, inter alia, Complainant’s official FENDI logo and offering e.g. a large variety of handbags advertised as original FENDI products for online sale. While UDRP panels generally recognize that resellers – whether authorized or unauthorized – using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods or services and, thus, have a legitimate interest in such domain name, the site under the disputed domain name then must e.g. actually be offering the goods or services at issue, use the website to sell only the trademarked goods or services and accurately and prominently disclose the registrant’s relationship with the trademark holder (so-called “OKI data test”, see WIPO Overview 3.0, section 2.8). In the case at hand, it remains somewhat unclear whether the handbags offered by Respondent under the disputed domain name are truly original FENDI or rather counterfeit products, though Complainant argues that the unrealistic low prices exclude the possibility that those products were purchased directly from Complainant or from an official affiliated producers. But even under the unlikely assumption that Respondent offered only original FENDI handbags under the disputed domain name, it must still be recognized that Respondent remains totally silent on its website on the fact that an official relationship in terms of e.g. a license agreement or the like with Complainant does not exist, which is why the OKI data test anyhow must fail. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. In the case at hand, it is undisputed between the Parties that Complainant’s FENDI trademark enjoys considerable recognition throughout the world, including in China where Respondent apparently is located. The fact that the disputed domain name, which is confusingly similar to Complainant’s FENDI trademark, resolves to a website at “www.fendi-outlets.com” which shows, inter alia, Complainant’s official FENDI logo and offers a variety of handbags advertised as original FENDI products for online sale, however not disclosing that an official relationship in terms of e.g. a license agreement or the like with Complainant does not exist, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s FENDI trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Moreover, and following Complainant’s undisputed line of argumentation, it is at least more likely than not that the handbags offered in fact are counterfeit products since the unrealistic low prices economically exclude the possibility that those products were purchased directly from Complainant or from an official affiliated producers. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. In this context, the Panel has also noted that Respondent obviously provided fault or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of Complaint dated November 3, 2020, could not be delivered. This fact at least throws a light on Respondent’s behavior which supports the Panel’s bad faith finding. Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung 1 It is evident from the case file that Super Privacy Service LTD c/o Dynadot, United States, is a privacy protection service and that Owen Bour, China, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.
Sole Panelist
Date: December 16, 2020
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